Non-use of a trade mark, and launching a new car

To keep a registered trade mark alive, the owner has to use it, and if it is not used for five years or more the law dictates that it can be revoked. Because it’s not always possible to use a trade mark in the normal way (applying it to goods, or supplying services under it) the law gives the owner a bit of latitude: there might be good reasons why the trade mark could not be used (perhaps raw materials could not be obtained). There might simply be no demand for the goods, or the owner might be busily using the trade mark to drum up some business. What does the  owner have to do to satisfy the powers that be that it has used the trade mark, but failed to sell anything?

This area of law was examined recently in a case involving two of the best-known names from the golden age of the British motor industry, Healey Sports Cars Switzerland Ltd v Jensen Cars Ltd [2014] EWHC 24 (Pat) (24 January 2014). It boiled down to a matter of whether Healey, which bizarrely owned the Jensen trade mark, had actually used it or not.Before the High Court, the case was an appeal from the Trade Marks Registry’s hearing officer, and was therefore limited to a review rather than being a rehearing: but Healey, which had lost in the Registry, put forward some important arguments to support its contention that it had used its trade marks.

The EU’s Court of Justice has considered what will amount to ‘genuine use’ in a number of cases, summarised by the deputy judge in the present case. Merely token use, designed only to preserve the trade mark rights, will not count. It must be aimed at maintaining or creating an outlet or a share of the market. Where the product is beer or perfume, there is a relatively small step between announcing your product to the world and supplying it to customers: with a new car, it’s a great deal further removed. Healey argued that they had made the world aware of their proposed new Jensen car, and that they were developing it for production, and on the face of it that must be a good argument for a car manufacturer to advance. However, the publicity had attracted no expressions of interest, photographs of prototypes gave no information about whether they had been made during the key five-year period (and anyway the prototypes had no badges visible on them), press coverage did not amount to use of the trade marks by Healey, and the fact that Healey’s press announcement had been put out three days after they had become aware of Jensen’s plans for a new car created a negative view in the miind of the deputy judge. A cautionary tale, therefore, for trade mark owners who aren’t actually using their valuable property.