Publications / Intellectual Property
The importance of continuing to use a trade mark as registered, and keeping evidence of that use, has been highlighted in a recent United Kingdom trade mark decision.
Failure to use a trade mark in accordance with its registration can ultimately result in removal or partial removal of the trade mark for non-use.
Guccio Gucci S.P.A.’s (Gucci) iconic GG logo has been partially removed as a trade mark in the United Kingdom after existing on the register since 1984.
A non-use application filed by fashion brand Gerry Weber International against Gucci claimed that the iconic GG logo had not been in use in the United Kingdom for all the goods claimed, or used in the same form as it was filed, for approximately nine years. In the United Kingdom, trade marks are vulnerable to removal if they go unused for a period of five years following registration.
The GG logo had been registered in classes 3, 14, 18 and 25. However, Gucci was only able to produce sufficient evidence of use of the trade mark in relation to class 3 goods such as perfumes and soaps.
In an attempt to show use of the GG logo in relation to classes 14, 18 and 25, additional evidence was provided by way of sales figures, however that evidence was not sufficient as it did not state that the sales were in the United Kingdom. Leather belts were also submitted as evidence, but were disregarded as Gucci’s trade mark specifically referred to ‘textile belts’.
Despite being one of the top 50 fashion brands in the world, the United Kingdom Intellectual Property Office revoked Gucci’s trade mark registration in relation to classes 14, 18 and 25 (which includes bracelets, bags, scarves, t-shirts, coats and leather belts) given the lack of evidence.
All may not be lost for Gucci as they have similar trade mark registrations for the GG logo in Europe (which covers the United Kingdom). However, the decision may increase the chances of Gucci’s other trade marks for the GG logo being challenged for non-use in other locations where there are no similar back-up registrations.
As in the United Kingdom, Australian law provides that a trade mark may be removed from the register by a non-use application if the trade mark is not used within a period of three years. This type of non-use application can be filed after a trade mark has been registered for five years. A trade mark may also be removed for non-use if it can be established that the owner had no intention of using the trade mark at the time of filing.
Trade mark owners should:
- ensure registered trade marks are used for the goods and services claimed as soon as possible after registration
- keep records of documentary evidence to demonstrate use of all key trade marks for all of the goods and services claimed. The evidence should be clearly dated, genuine and sufficiently detailed so that use of each good or service is decipherable from the next. The evidence should also be clearly tailored and refer to the relevant country in question (broad international use will not be sufficient), and
- use trade marks in the same form in which they are registered (i.e. by not adding or removing elements from a word or logo) for all the goods and services claimed in the registration. Any slight changes in use may leave trade marks vulnerable to total or partial removal.
If you require assistance with any aspect of trade mark or Intellectual Property Law, please contact our team.
Focus covers legal and technical issues in a general way. It is not designed to express opinions on specific cases. Focus is intended for information purposes only and should not be regarded as legal advice. Further advice should be obtained before taking action on any issue dealt with in this publication.