Decision Nº O/109/22 from Intellectual Property Office - (Trade market), 8 February 2022
| Judge | Miss A Klass |
| Date | 08 February 2022 |
| Registration Number | UK00811128694 |
| Administrative Decision Number | O/109/22 |
O/109/22
TRADE MARKS ACT 1994
IN THE MATTER OF
APPLICATION NO. 503714
TO REVOKE ON THE GROUNDS OF NON-USE
TRADE MARK REGISTRATION NO. UK00811128694
OF THE TRADE MARK:
OWNED BY
DESTILERIAS M.G., S.L.
AND
IMPORTACIONES Y EXPORTACIONES VARMA, S.A.
Page 1 of 17
BACKGROUND AND PLEADINGS
1. These proceedings concern the trade mark shown on the cover page of this
decision (“the proprietors’ mark”) which stands registered in the name of Destileras
M.G., S.L and Importaciones y Exportaciones Varma, S.A. (“the proprietors”). The
proprietors’ mark was initially registered as an international registration on 3 July 2012.
On 21 June 2013, the proprietors’ designated the EU as a territory in which they sought
to protect the mark under the term of the Protocol to the Madrid Agreement. The
request was accepted and the proprietors’ mark was entered into the register on 8 July
2014. The proprietors’ mark is registered for the following goods:
Class 33: Gin, namely London Dry Gin.
2. On 1 January 2021, the UK left the EU. Under Article 54 of the Withdrawal
Agreement between the UK and the EU, the UK IPO created comparable UK trade
marks for all right holders with an existing international registration designating the
EU. As a result of the proprietors’ mark being registered as an international registration
designating the EU at the end of the Implementation Period, it was automatically
converted to a comparable UK trade mark. The comparable UK mark is now recorded
on the UK trade mark register and has the same legal status as if it had been applied
for and registered under UK law, and the original international filing dates remain.
3. On 18 March 2021, Inver House Distillers Limited (“the applicant”) sought
revocation of the proprietors’ mark on the grounds of non-use. Under section 46(1)(a)
the applicant claims non-use in the five-year period following the date on which the
mark was registered, i.e. 9 July 2014 to 8 July 2019, with revocation sought from 9
July 2019. Under section 46(1)(b) the applicant claims non-use in respect of the
proprietors’ mark for the period between 17 March 2016 to 16 March 2021, with
revocation sought from 17 March 2021.
4. The proprietors filed a counterstatement defending their registration for all
goods for which it is registered, on the basis that they had been used during the
relevant period.
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