By Christopher Benson, senior associate, IP department and Head of Trademark prosecution
A UK trade mark registration for the mark SWEET FEET (for "foot and shoe deodorant") has recently been revoked on the basis that the mark was not put to genuine use in the UK for a period of 5 years and there were no proper reasons for the non-use.
The registered proprietor of the mark claimed that it had made genuine use of the mark and submitted evidence allegedly showing that the mark had been used on samples of foot deodorant for test marketing and evaluation, and that SWEET FEET products had been published in the Chemist & Druggist Price List since 1997. However, no evidence of actual sales was submitted.
Applying the principles of law set down by the European Court of Justice in the Ansul v. Ajax and La Mer v. Laboratories cases, the Hearing Officer deciding the case held that, whilst there was "nothing fake or sham" about the evidence of the registered proprietor's activities in relation to the mark SWEET FEET, and that he had no reason to believe or infer that these activities were conducted merely to preserve the registration, he did not believe that the activities were "suffice to create a market share in the relevant goods given the characteristic of the market (which is for a relatively ordinary consumer product) and the scale and frequency of the registered proprietor's use".
The evidence did not show that any actual sales took place, or that any active marketing campaigns had been conducted in respect of goods sold under the mark. The limited use made by the registered proprietor of the mark did not have any real impact in the market for the goods.
The Hearing Officer stated that the use made of the mark had to be either to maintain or create a share in the market for the goods for which the mark was registered. This had not happened in this case and as a consequence he declared that the registration for the mark was to be revoked.
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