Abanka D.D v Abanca Corporación Bancaria S.A.
|England & Wales
|06 October 2017
| EWHC 2428 (Ch)
|APPEAL REF: CH 2017-000010
|06 October 2017
 EWHC 2428 (Ch)
IN THE HIGH COURT OF JUSTICE
ON APPEAL FROM THE REGISTRAR OF TRADE MARKS
Fetter Lane, London EC4
Mr Daniel Alexander QC
Sitting as a Deputy Judge of the Chancery Division
APPEAL REF: CH 2017-000010
Mr Simon Malynicz QC (instructed by Innovate Legal LLP) for the Appellant
Mr Andrew Norris (instructed by Potter Clarkson LLP) for the Respondent
Hearing date: 19 June 2017
I direct that, pursuant to CPR PD39A para 6.1, no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Daniel Alexander QC
Daniel Alexander QC
This is an appeal from the decision of Ms Judi Pike, acting for the Registrar, in consolidated proceedings for
a. revocation of two international trade mark registrations of which the key element is the word , owned by the appellant, Abanka d.d. ("Abanka") and
b. opposition based on those marks against an application for registration of the trade mark in stylized form filed by the respondent, Abanca Corporación Bancaria S.A. ("Abanca").
The marks in issue
The marks ABANKA (in colour and in black and white or no colour) are international trade mark registrations (numbers 860632 and 860561, respectively) in classes 35, 36 and 38 have been protected in the UK since they completed their registration procedures on 17 March and 24 March 2006, respectively. Their specifications were set out in the annex to the hearing officer's decision and they cover a very wide range of financial services. It is not necessary to set all of these out at this stage.
Use of the marks
It was not in dispute that there had been no use in relation to a wide range of the services in question. The central issue in the case is whether the activities of Abanka constitute use of the marks in the UK sufficient to support the continued registration of the marks in respect of some or all of the remainder. The hearing officer held that no use had been proved in the relevant periods with the consequence that the marks were revoked and could not be relied on as a basis for opposition to the registration of the marks ABANCA by Abanca. Accordingly, she also dismissed the opposition.
As to that opposition, Abanka opposes Abanca's request for protection of ABANCA in classes 9, 16, 35, 36 and 38 only under section 5(2)(b) of the Trade Marks Act 1994 ("the Act"), claiming a likelihood of confusion with the earlier ABANKA marks which are the subject of the applications for revocation. The hearing officer did not ultimately need to decide whether or not the marks ABANCA in its particular stylized form and font and ABANKA in the form in which it was registered sufficiently similar so as to give rise to a likelihood of confusion in respect of any of the goods or services for which registration of the ABANCA mark was sought, since the earlier registrations were revoked. That removed the whole basis for the oppositions. It is of some significance for what follows that Abanka did not challenge the registration of the stylized ABANCA mark on the basis of section 5(4) of the Act (alleging passing off) or suggest that it had built up sufficient goodwill in the UK as a result of its activities to do so. Nonetheless, it contends that the law relating to use of trade marks entitles it to preserve its registrations.
There is no dispute as to the relevant periods in respect of which use must be considered and no dispute as to the primary facts, although Abanca invited the hearing officer and this court on appeal to look at some of the evidence of use with a sceptical eye. The real issue is whether, assuming the primary facts as found by the hearing officer are proved, such constitutes use in the UK sufficient to maintain the registrations to any and, if so, what extent.
Section 46 of the Act provides:
"(1) The registration of a trade mark may be revoked on any of the following grounds—
(a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;
(b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;
(c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered;
(d) that in consequence of the use made of it by the proprietor or with his consent in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
(2) For the purposes of subsection (1) use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, and use in the United Kingdom includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes.
(3) The registration of a trade mark shall not be revoked on the ground mentioned in subsection (1)(a) or (b) if such use as is referred to in that paragraph is commenced or resumed after the expiry of the five year period and before the application for revocation is made.
Provided that, any such commencement or resumption of use after the expiry of the five year period but within the period of three months before the making of the application shall be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application might be made.
(4) An application for revocation may be made by any person, and may be made either to the registrar or to the court, except that——
(a) if proceedings concerning the trade mark in question are pending in the court, the application must be made to the court; and
(b) if in any other case the application is made to the registrar, he may at any stage of the proceedings refer the application to the court.
(5) Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only.
(6) Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from——
(a) the date of the application for revocation, or
(b) if the registrar or court is satisfied that the grounds for revocation existed at an earlier date, that date."
The onus is on the proprietor to prove use. Section 100 of the Act provides:
"If in any civil proceedings under this Act a question arises as to the use to which a registered trade mark has been put, it is for the proprietor to show what use has been made of it."
Proof of use – general
The hearing officer took the summary of the relevant principles from at – as follows:
"217. In Case C-40/01 , Case C-259/02 and Case C-495/07 (to which I added references to Case C-416/04 P ). , I set out at  a helpful summary by Anna Carboni sitting as the Appointed Person in at  of the jurisprudence of the CJEU in I also referred at  to the judgment of the CJEU in Case C-149/11 [EU:C:2012:816], on the question of the territorial extent of the use. Since then the CJEU has issued a reasoned Order in Case C-141/13 [EU: C:2014:2089] and that Order has been persuasively analysed by Professor Ruth Annand sitting as the Appointed Person in .
219. I would now summarise the principles for the assessment of whether there has been genuine use of a trade mark established by the case law of the Court of Justice, which also includes Case C-442/07 and Case C-609/11 [EU:C:2013:592], , as follows:
(1) Genuine use means actual use of the trade mark by the proprietor or by a third party with authority to use the mark: at  and .
(2) The use must be more than merely token, that is to say, serving solely to preserve the rights conferred by the registration of the mark: at ; at ; at ; at ; at .
(3) The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user by enabling him to distinguish the goods or services from others which have another origin: at ; at ; at ; at ; at ; at .
(4) Use of the mark must relate to goods or services which are already marketed or which are about to be marketed and for which preparations to secure customers are...
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