UK: Use it or Lose it - Effective Trade Mark Registration Management

A trade mark registration is a powerful legal weapon. To conjure up a nautical analogy it is the aircraft carrier of Intellectual Property Rights. The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed if the mark is used without his consent. Rights extend to the use of similar marks in relation to similar goods to those which are protected under the registration and can extend even further. In contrast to patents, copyright and registered designs, trade mark registrations can be renewed indefinitely and the lack of knowledge of the right is no defence to a trade mark infringement claim.

The courts are keen to limit the scope of such a powerful monopoly right to that which is necessary to protect the legitimate rights of the trade mark proprietor. One of the main restrictions of trade mark registrations is the use requirement. A trade mark registration in the UK can be cancelled if it has not been put to genuine use within the last five years. In other words: use it or lose. The use requirement avoids what Justice Jacob recently described as unused trade mark registrations forming "abandoned vessels in the shipping lanes of trade".

So, when is a registered trade mark in use or not in use? Marketing plans change, traders make small alterations to their marks over time to exploit new opportunities or reflect new fashions. However, do trade mark owners have to register every variation of an existing mark? The Trade Mark Act states that a trade mark registration can be maintained not only if the mark as registered has been used in the past five years, but also if the registered mark has been used "in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered." What does this mean in practice?

The question was recently considered in the latest round of the titanic decades-old struggle between Anheuser-Busch and the Czech brewer Budejovicky Budvar concerning the use of the BUDWEISER and BUD trade marks. After winning all the previous cases, Budvar lost for the first time in December 2001. Although the latest decision may only turn out to be a consolation goal in the dying minutes of the Budweiser game, it could have significant bearing on the scope of trade mark registrations in the UK and across the European Union.

The case concerned an appeal from the Trade Marks Registry, in which Anheuser-Busch were attempting to cancel a registration of the stylised trade mark BUDWEISER BUDBRAU. At the original hearing, it was decided that the average consumer would take the message of the trade mark concerned as essentially the words BUDWEISER BUDBRAU and the different fonts and stylisation of the label did not detract from this message. The presiding judge criticised the decision on two crucial grounds. First, the section of the Act referring to non-use requires the determination by the court of what makes up the "distinctive character" of the mark and does not ask what the average consumer's reaction is to the mark concerned. Second, it is wrong to ascertain what is the "central message" of the mark.

He held that the distinctive character of the BUDWEISER BUDBRAU registration consisted of four elements: the word Budweiser, the word Budvar, the specific fonts used for the two words and contrast in fonts and the interrelationship of the two words. The judge held that Budejovicky had only used the first two elements in the two cases of "use" of the trade mark they had put forward in defence of the registration. Accordingly the Trade Mark Registration of BUDWEISER BUDBRAU was cancelled and the appeal succeeded.

The decision appears to narrow the scope of defence of a trade mark registration to a non-use cancellation action. Consequently, traders may be forced to register new modifications to their existing marks. The case may well be referred to the ECJ and not only will that court decide on the issue at hand, but also whether oral use of trade mark can constitute use of a trade mark registration for non-use purposes. A question raised in the present case, but not decided upon by the court. Maybe some aeronautical metaphors will be apt as opposed to all things naval.