Magazine publisher Hachette and textile maker Saprotex both used the trademark ‘Elle.’ Something had to give, and in this dispute it was Hachette’s “Elle” registrations for slippers, headgear and artificial flowers. Why? We report at
Who: Hachette Filipacchi Presse and Saprotex International
A verdict was reached in a fight over the trademark "Elle" between magazine publishers Hachette Filipacchi Presse ("HFP") and South African textile firm Saprotex International ("SI").
HFP, publisher of "Elle" magazine, had registered the trademark "Elle" in the UK for a wide range of products including bed covers, artificial flowers, spectacles, clothing and bags.
SI used the brand "Elle" on some of its own products and applied to the UK tribunal to have the HFP trademark registrations revoked.
The basis of their application was 5 years' non-use.
Having heard HFP's evidence of its use or otherwise over the last 5 years of the "Elle" brand in respect of the various relevant products, the court reached a verdict. This was that HFP had failed to show qualifying use in respect of "bed covers, table covers, household linen (other than clothing) and bed blankets; lace and embroidery, ribbon and braid, and artificial flowers; and slippers and head gear". Accordingly the judge revoked the relevant trademark registrations with effect from 11 November 2004, when SI first made its application.
HFP was able to persuade the courts, however, that the Elle brand had been used over the last 5 years in respect of clothing, bags and other accessories, spectacles and sunglasses and beach towels, so HFP was allowed to retain these registrations.
Why this matters:
All those seeking to register trademarks should remember that any registration is open to challenge on the basis that it has not been used by the registered owner for a continuous period of 5 years.
This can crop up as an issue in an advertising context. An advertising agency, for instance, might devise a wonderful new brand name for its prospective client, but be concerned that the client may take the brand, but not the agency. If the agency pre-emptively applied to register the brand as a trademark in its own name, would that enable it to prevent the client from using that trademark? The answer is "probably not".
This is not only because the application might be regarded as being "in bad faith", although on the basis of recent cases anything much short of dishonesty is unlikely to qualify here. Alternatively, unless the agency itself uses the brand in respect of products or services it is itself supplying, then the registration will be open to revocation if the non-use continues for 5 years.