Token use of a fashion trade mark: a risky strategy

Published, 7 years ago

Did you know that rights in a UK-registered mark or Community trade mark can be revoked if there is no genuine use (with no good reason) of the mark over a continuous five-year period? J & J Crombie Ltd found out the hard way in the recent case of J and J Crombie Ltd v Nutter (Holdings) Ltd, when Crombie lost its TOMMY NUTTER trade mark which, over a five-year period, it had used minimally in relation to suits and waistcoats.

Once an application is filed for revocation of a trade mark on grounds of non-use, it is up to the registered owner of the trade mark to prove that either there is evidence of genuine use, or alternatively, that there is a proper reason for non-use, otherwise the registered owner will lose the registered trade mark. The Hearing Officer on behalf of the Registrar of Trade Marks or the courts (upon appeal) will determine whether there has been genuine use on a case by case basis. As a guideline, it is important to make sure that the use of the mark is:

More than merely ‘token’

The use must not serve solely to preserve the rights provided by registration. In Crombie’s case, Crombie’s evidence of use was in relation to the sale of 46 waistcoats, the sale of 21 suits, publicity surrounding the possible sale of the brand, and use of the mark verbally in the sale process and at some events. However, there was no evidence of use of the mark on swing tags or on the waistcoats themselves during the relevant period. This use was therefore considered ‘token’ by both the Hearing Officer and the court.

By way of real commercial exploitation

The use concerned must aim to create or maintain a share in the market. Minimal use will nonetheless not of itself disqualify the use from being ‘genuine’. For example, limited use of a mark may be warranted in a particularly exclusive market.

Consistent with the ‘essential function’ of a trade mark

The use must be consistent with the purpose of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin. In Crombie’s case, it was decided that the verbal reference to the mark in the context of a historical connection between Crombie and Tommy Nutter and Tommy Nutter designs was descriptive, rather than beingan indicator of the origin of the garments.

The Crombie case serves as a reminder that it is important to ensure that evidence submitted to both the Hearing Officer and any court will stand up to scrutiny. If you would like advice about trade marks, or any other IP related issues, please contact the IP and Media Team at Pannone.

Liked what you read? Share the article!

Share on facebook
Share on twitter
Share on pocket
Share on whatsapp
Share on linkedin

Get Noticed with Fashion Rider.

Get the recognition you deserve. Portfolio, Jobs, Social Media promotion and much more. All in one membership. 

You might also like

Fashion and the end of the Brexit transition period

19th October 2020 Fashion and the end of the Brexit transition period – points to consider as we approach 31 December 2020 With less than …

Read More

How Freelancers Can Thrive With a Strong Digital Presence

Freelancer? Working from home or for yourself? In need of a gentle reminder? Whatever your business and whatever your industry; a strong digital presence has …

Read More

How To Grow Your Social Media

In most industries social media is used on a daily basis, particularly in the fashion industry. Making your posts gain traction and high quality leads …

Read More

Things to consider in a Fashion Marketing Strategy

Having a marketing strategy that is consistent and is relevant to your customer base is so important when trying to grow a business. You need …

Read More

Fashion Advice: Funding for Fashion Professionals

Launching a business can be a scary yet exciting time.  You have your business plan and strategy set, and you have a clear vision as …

Read More

Fashion Industry Awareness

Whether you are just starting or have been working in the fashion industry for a while, you already know that watching out for the latest …

Read More

Top 8 Fashion Tips for Working Women Who Want To Break That Glass Ceiling

As a woman trying to make it in the cutthroat competitive working environment that is the corporate world, you have your work cut out for …

Read More

Fashion Professionals: Do you know your taxes?

Running your own business, big or small, involves taking care of your tax returns.  Knowing your taxes and in particular small business taxes are vital. …

Read More

Fashion Professionals: Are you using the right accounting software for your business?

Accounting and indeed accounting software can be a minefield if you’re not doing it day in and day out. Accounting isn’t always everyone’s strong point …

Read More

We use cookies to offer you a better experience and analyze site traffic. By continuing, you consent to the use of the cookies following our privacy policy. You may choose to opt-out through our privacy policy page.