The Alice Trade Mark Case. Non Use of a Trade Mark Neutral Citation Number: [2024] EWHC 3256 (IPEC)

REVOCATION OF A TRADE MARK

Section 46(1) TMA states that a trademark may be revoked for any of the following reasons:

“(a) that within the period of five years following the date of completion of the registration procedure, it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;

(b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;

…” Section 46(5) TMA provides that where grounds for revocation exists in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only”

The case revolves around the Claimant’s UK-registered trade mark “ALICE” (No. 3,362,772), registered in 2019 for goods in Class 9 (audio and audiovisual apparatus) and services in Class 37 (repair and maintenance). The Claimant alleged trade mark infringement by the Defendants, who marketed a digital camera named “Alice Camera.” The Defendants accepted liability for infringement but counterclaimed for the revocation of the ALICE mark, asserting non-use during the relevant five-year period.

Key Facts

The Claimant

• Incorporated in 2016, the Claimant designs and sells audio and audiovisual equipment under the ALICE mark, reviving a legacy brand.
• The Claimant’s product range includes audio mixing desks, amplifiers, and the Timecode Distribution Amplifier (Timecode DA), used in radio, television, and audiovisual production.

The Defendants

• The First Defendant, established in 2019, markets the “Alice Camera,” a digital camera attaching to smartphones.
• The Second to Fourth Defendants are co-founders and directors, sharing liability as joint tortfeasors.
• The Alice Camera was marketed in the UK through online platforms and exhibitions but had not been widely delivered to customers.

Claims and Counterclaims

Claim for Infringement

• The Claimant argued that the Defendants’ use of the names “Alice” and “Alice Camera” infringed its trade mark under Sections 10(1) and 10(2) of the Trade Marks Act 1994 (TMA).
• The Defendants admitted infringement under Section 10(2) but denied that the mark was identical under Section 10(1).

Counterclaim for Revocation

• The Defendants sought revocation of the ALICE mark, alleging a lack of genuine use between March 2019 and May 2024.
• They argued that the Claimant’s use was limited, failed to meet genuine use criteria, and required a reduction of the trade mark specification.

Legal Principles

Genuine Use

• Genuine use requires real commercial exploitation of a trade mark to maintain or create a market share.
• Even minimal use can qualify if warranted in the sector.
• The Court evaluates all evidence to determine if the mark has been used genuinely for goods and services specified.

Likelihood of Confusion

• Likelihood of confusion arises when similarities between the trade mark and the sign mislead the public about the origin of the goods.
• This includes scenarios where the sign suggests an association with the trade mark owner.

Court Findings

Genuine Use

1. Class 9: Goods
   • The Claimant demonstrated genuine use across the Class 9 specification.
   • Products like the Timecode DA and audio mixing desks were shown to fall within categories such as “signal-mixing apparatus” and “apparatus for recording or reproduction of sound or images.”
   • Sales invoices, product leaflets, and third-party distributor listings substantiated commercial activity.
2. Class 37: Services
   • The Claimant provided evidence of repair, maintenance, and refurbishment services for its products and third-party audio equipment.
   • These activities aligned with the Class 37 specification.

Likelihood of Confusion

• The Court held that the Defendants’ “Alice Camera” sign was highly similar to the ALICE mark.
• “ALICE” was the dominant and distinctive element, with “CAMERA” being purely descriptive.
• The Defendants’ marketing positioned the Alice Camera as suitable for professional use, overlapping with the Claimant’s customer base and product purpose.

Infringement

1. Section 10(1) TMA: Identical Marks
   • The Court found that “Alice Camera” was not identical to the ALICE mark due to the addition of the descriptive term “Camera.”
   • Thus, Section 10(1) was not engaged.
2. Section 10(2) TMA: Similar Marks
   • The use of “Alice Camera” created a likelihood of confusion with the ALICE mark, infringing under Section 10(2)(b).
   • The Defendants’ own admissions reinforced this conclusion.

Revocation Counterclaim

• The Claimant successfully proved genuine use throughout the relevant period.
• The Court rejected the Defendants’ counterclaim and maintained the full trade mark specifications in Class 9 and Class 37.

Key Observations

• Target Market Overlap: The Court rejected the Defendants’ argument that their product targeted only consumers. Evidence showed potential overlap with professionals in the audiovisual industry.
• Marketing Evidence: The Defendants’ promotional material implied suitability for professional use, bolstering the likelihood of confusion.
• Admissions by Defendants: The Defendants’ concessions during cross-examination undermined their claims of non-infringement.

Judgment

Liability

• The First Defendant infringed the ALICE mark under Section 10(2)(a) and (b) of the TMA through the use of “Alice” and “Alice Camera” signs.
• The Second to Fourth Defendants were held jointly liable as co-founders and directors.

Revocation Counterclaim

• The ALICE mark was upheld, with genuine use demonstrated across both Class 9 and Class 37.

Remedies

• The Claimant is entitled to declarations of infringement, injunctive relief, and potential damages or an account of profits.

Conclusion

This case emphasises the importance of robust trade mark use evidence and highlights the risks of overlapping branding in competitive markets. The judgement reinforces that even small-scale commercial activity can suffice to demonstrate genuine use if it aligns with industry norms and maintains market presence.

https://www.bailii.org/ew/cases/EWHC/IPEC/2024/3256.html

tmr@trademarkroom.com