The High Court has dismissed an appeal challenging the UKIPO’s decision that the owner of the trade mark AIWA had failed to demonstrate genuine use of goods through second-hand sales, albeit for different reasons to those originally discussed by the UKIPO’s Hearing Officer. Mann J found that Aiwa Co Ltd’s AIWA mark should be revoked for non-use and, accordingly, he dismissed the corresponding opposition against Aiwa Corporation’s application to register a similar AIWA mark.

 

This decision illustrates the difficulties inherent in reviving a heritage brand that has been dormant for some time. Venerable brands usually have a portfolio of trade marks which includes logos that have been rebranded as part of efforts to revitalise the brand, or products that have been replaced by new lines.

 

As this judgment highlights, a registered mark that has not been used for a continuous period of five years in respect of the goods and services for which it is registered, even if there are examples of second hand sales or after sales services, may be vulnerable to revocation (either wholly or in part). This is something that brand owners looking to revive historic brands need to consider. One way that the risk of a non-use challenge can be overcome is preserving a brand’s heritage by reviving old logos or product names for a limited period as part of a “nostalgia” or “retro” campaign.

 

Another key point to take from this decision is that the evidence of use being submitted must show that the second hand sales amount to a real commercial exploitation of the mark and that such second hand sales are preserving that market share to some extent. In addition, conducting second hand sales through or with some link to the proprietor of the trade marks in question will assist in showing that the use is genuine.

 

Cases cited: Aiwa Co Ltd v Aiwa Corp [2019] EWHC 3468 (Ch) and London Taxi Corp Ltd (t/a London Taxi Co) v Frazer-Nash Research Ltd [2015] EWHC 1840 (Ch)

 

Legislation cited: Trade Marks Act 1994 (c.26)

 

Our full article has been published in the Entertainment Law Review:

Ent. L.R. 2020, 31(4), 144-146