Not using a registered trade mark for 5 years exposes it to revocation. Proving use was not just a matter of asserting it, the court said in this milk drink brand case. Ideally contemporaneous evidence in the form of brochures, advertisements etc was needed, but would a few empty packs do the trick? And is Moo Juice open to challenge on ‘not distinctive’ grounds?
Topic: Brands
Who: Almighty Marketing Limited and Milk Link Limited
Where: UK Trade Marks Registry
When: March 2006
What happened:
Background
After failing to convince the High Court at the end of last year to revoke Almighty Marketing's trade mark MOO JUICE on the grounds that the mark had not been put to genuine use for five years, Milk Link has now also failed in its attempt to get MOO JUICE invalidated in the Trade Marks Registry.
Almighty Marketing owns the trade mark MOO JUICE, first registered on 16 August 1996. The mark covers "milk; milk beverages; flavoured milk; milk products; yoghurt; drinking yoghurt; flavoured yoghurt". Almighty Marketing is a dairy farming company, as is Milk Link. One of Milk Link's products is a brand of long life milk called 'Moo'. After unsuccessful negotiations with Almighty Marketing for a licence to use the MOO JUICE mark, Milk Link decided instead to attack the registration, firstly on the basis of non-use for five years and secondly on the basis that the mark should not have been registered in the first place.
Revocation proceedings
The High Court proceedings in 2005, in which Osborne Clarke acted for Almighty Marketing, centered around whether or not Almighty had put the mark to genuine use. It was held that they had put the mark to genuine use. The evidence submitted was predominantly made up of a letter from Almighty's accountants confirming the mark had been in daily use until March 2001, and sample milk carton labels bearing the mark.
Milk Link argued that this evidence was inadequate and applied to effectively disqualify Almighty from defending its brand against the non use attack. The Hearing Officer agreed with Milk Link. He said that to show genuine use within the five year period in question, the owner of the mark needed to provide information such as "brochures, catalogues, pamphlets, advertisements or the like" plus an indication of sales achieved during the relevant period under the brand in question. Almighty had not supplied any of these categories of evidence.
On appeal, the Court took a different view. Whilst evidence in the categories identified by the Hearing Officer was highly desirable, it was not an express requirement at this point in the proceedings. It was sufficient for these purposes for Almighty to show that it had an arguable defense to Milk Link's attack on grounds of non-use, and this it had shown.
Invalidity proceedings
Milk Link's second attack on the mark came by way of an invalidity action in the UK Trade Marks Registry. Milk Link tried to claim that MOO JUICE was:
- lacking in any distinctive character
- descriptive of milk
- commonly used as slang for milk
The hearing officer at the Trade Marks Registry rejected all of these claims. Almighty's trade mark application was originally filed on 4 December 1995, and Milk Link therefore needed to show that the mark was lacking in distinctive character, descriptive and in common use at that time. It was unable to do any of those things, as although it had submitted a significant amount of evidence, all of this related to use of the term 'moo juice' in relation to milk after 1995, and the majority was use in the US, which was not relevant in the UK.
The only example of use which Milk Link was able to rely on which predated 1995 was use of the phrase by Lisa Simpson in 'The Simpsons' in an episode first broadcast on Sky One in 1991 and repeated subsequently thirty times: Lisa asks Bart to "pass the moo juice". As the hearing officer put it:
"if the foundations of the claim to common parlance are on the basis of Lisa Simpson in one episode using the phrase moo juice, they would seem to be built on shifting sands."
Why this matters:
The case carries two principal messages.
Firstly although Almighty's evidence of having used its brand just passed muster in this particular instance, it would clearly have been more satisfactory if they had been able to produce contemporaneous evidence of use of the brand by way of sales records and originals of the categories of marketing material listed by the Hearing Officer. Keeping such records should be an integral part of brand maintenance and protection programmes.
Secondly, the lesson for those seeking to invalidate a trade mark on grounds of lack of distinctiveness is that it is worth doing your homework before you begin and make sure it is relevant. In Milk Link's case, it seems that their homework was done too late. As the hearing officer noted, Milk Link seemed to have "scoured the Internet, employed investigators, yet have come up with a paucity of evidence of use of moo juice in the United Kingdom; there is no evidence that the average consumer or traders know or understand the phrase."
Susanna Ewing
Solicitor
Osborne Clarke London
