E(Instein) = M(Arks) C(Onsent) For Squares

brings intelligence of a decision on consent from the U.K. Trade Marks Registry.

Continental Shelf 128 (Shelf) was the assignee of the U.K. give-and-take score for EINSTEIN, registered for ‘articles of article of apparel included inwards Class 25’. The Hebrew University of Jerusalem (the University) applied to direct hold the score revoked nether s.46(1)(b) of the Trade Marks Act 1994 (TMA), arguing that it had non been used during the five-year menstruum of nineteen July 1999 as well as nineteen July 2004. If roughly utilisation could last shown during that period, the University argued that the score should last restricted inwards accordance alongside s.46(5) of the TMA.

Shelf filed show purporting to demonstrate genuine use. This consisted of 4 invoices which emanated from a companionship called Hornby as well as were addressed to a companionship named Jeevika International Limited. The invoices concerned men’s polo shirts, shorts, roll-neck jumpers as well as long-sleeved T-shirts which bore the give-and-take EINSTEIN alongside the kickoff alphabetic character written over a foursquare inwards a contrasting shade or colour. Sewn-in labels as well as swing-tags were also exhibited. In his witness statement, the sales executive of Hornby Street Limited stated that Hornby was a sis companionship of Shelf, as well as had used the EINSTEIN marks alongside the consent of Shelf.

Albert Einstein gives his considered persuasion of European Union merchandise score law

The application for revocation was allowed:

*The right enquiry when establishing the presence of consent is non whether the merchandise score has been used against the wishes of the proprietor. If it were, acquiescence would kicking the bucket synonymous alongside consent. Under s.100 of the TMA, the onus of proving such consent is on the mark’s owner. Evidence of such consent must last properly made out as well as cannot last left to probabilities or suppositions. Here at that spot was a disputation that Shelf as well as Hornby were sis companies, only at that spot was no show of this or explanation of what it meant. Accepting such a disputation was equally proof of consent would seat a premium on non putting inwards whatever evidence. As a result, Shelf’s supposed consent to Hornby’s utilisation of the EINSTEIN score was non made out.

*Even if Shelf had consented to Hornby’s utilisation of the EINSTEIN mark, it was non clear that consent lonely without command of Hornby’s activities (the ‘bare licence approach’) would last sufficient to keep the registration on the register. Although Art.10(3) of Directive 89/104 states that utilisation of a score alongside the consent of its proprietor is deemed to constitute utilisation past times the proprietor himself, next Heidelberger Bauchemie, Directive 89/104 must last read inwards as well as hence far equally is possible inwards the low-cal of the TRIPs Agreement. Art.19(2) of TRIPs states that utilisation of a merchandise score past times a 3rd political party must last recognised equally utilisation of the merchandise score for the role of maintaining the registration where the utilisation past times the 3rd political party is dependent area to the command of the merchandise score owner. This emphasis on ‘control’ is also apparent inwards the French as well as Castellano versions of that article.

*Additionally, recognising utilisation alongside the consent of, only without the command of, the merchandise score possessor equally sufficient to keep registration would last inconsistent alongside the essential business office of a merchandise score which, inter alia, offers a guarantee that ‘all the goods or services bearing it [the mark] direct hold been manufactured or supplied nether the command of a unmarried task which is responsible for their quality’.

*In this case, at that spot was nil to advise that Shelf had exercised whatever command over Hornby’s utilisation of the EINSTEIN mark, making the instance for maintaining registration fifty-fifty weaker.

*In the trial that the hearing officeholder was incorrect on the non-use point, he held that the registration should last express to ‘casual outer article of apparel for men inwards Class 25’.

reckons that the hearing officeholder is right – lack of objections sure enough can’t last equated alongside consent. What’s to a greater extent than interesting to him though is the means that the command number has been dealt with. For ane thing, it’s pretty rare to direct hold recourse to the TRIPs Agreement inwards domestic merchandise score proceedings. If such recourse is necessary, tin plough over the axe the affair actually last considered to last acte clair? Control is ane of those tricky topics that pops upwards inwards diverse places inwards merchandise score police delineate (take a expect at Mastercigars v Hunter & Frankau - which the IPKat volition last reporting on later), only which hasn’t been defined soundless past times the ECJ. More generally, consent equally a concept appears a number of times inside Directive 89/104. Here the hearing officeholder has read the term past times reference to the essential business office of a merchandise mark, only must such an approach last taken inwards all circumstances inwards which the term ‘consent’ is used? For example, the Directive allows a mark-owner to consent to the registration of a score which would otherwise conflict alongside his score nether the relative grounds. This has the potential to plough over consumers a faux message close beginning as well as command – should the concept of ‘consent’ also last read restrictively inwards these circumstances too?