Weeks after the launch by Reed of its “Minerva” book imprint, stationery and other printed material suppliers Pomaco applied to register “Minerva” as a trade mark for “paper and paper articles….printed matter…stationery…all included in class 16.”
Who: Reed Consum> Who: Reed Consumer Books Ltd and Pomaco Ltd
Where: Chancery Division of the High Court, London
Weeks after the launch by Reed of its "Minerva" book imprint, stationery and other printed material suppliers Pomaco applied to register "Minerva" as a trade mark for "paper and paper articles….printed matter…stationery…all included in class 16."
Once Pomaco got their registration they threatened Reed with infringement proceedings but it was Reed who eventually applied to the court, for a declaration that Pomaco had no case.
Their main argument was that Pomaco's registration for "printed matter" should be revoked to the extent that it covered printed literary matter as opposed to stationery. This was because Pomaco had not used "Minerva" in respect of printed literary matter for five years (five years non-use of a registered trade mark being an established ground for its revocation).
Mr Justice Jacob agreed with Reed. He said that if "printed matter" in this context meant any appearance of the trade mark in print, eg on a price label or a magazine advertisement, then all trade marks could be validly registered for that specification. This was clearly not the case, he said. "Printed matter" here meant material being sold as such, for example printed stationery, diaries or calendars or literary material such as books and magazines. As Pomaco had provided no material evidence of use on the second "literary" category of goods for five years, their registration should be revoked and restricted to "printed matter (all being stationery)." This meant Pomaco had no case against Reed.
Why this matters:
When an application to register a trade mark is filed, a choice has to be made as to the "specification" of products for which the mark is going to be registered. These specifications must come within one or more of the 42 different classes of goods and services that are available, called the "Nice classification." The best protection your trade mark registration gives is against users of the same mark on specifications of product which are the same as those for which you have registered your brand.
But there are pitfalls in making the right selection of "specification" as this case shows.
It is quite common to see trade marks used primarily for, say, cars also registered in class 16 in respect of "printed material" and/or "advertising material." Presumably this is because it is thought that such a registration will give protection against unauthorised use of the same mark in printed advertisements for quite unrelated products. This is not the case, and all brand owners who currently have such registrations should be reviewing them urgently.