One more Loch Ness mystery
Evidence of use was completely absent, says Paul Hegedus. O/772/19, LOCH NESS (Opposition), UK IPO, 13th December 2019
These UK IPO invalidation proceedings, filed by Duncan Taylor Scotch Whisky Ltd (the Applicant), concern six trade mark registrations containing the words LOCH NESS (all for alcoholic products) in the name of Loch Ness Spirits Ltd (the Proprietor). The grounds for invalidation were based on s47(2)(b) and s5(4)(a) of the Trade Marks Act 1994.
The Applicant for invalidity argued it was currently a producer of Scotch whisky and other spirits and had used LOCH NESS WHISKY as one of its original (unregistered) brands since 2008, some seven years before the Proprietor. It claimed that the LOCH NESS WHISKY product was brought to market (and the mark had been used) by related companies of the Applicant called The Original Loch Ness Whisky Company Ltd and The Loch Ness Whisky Company Ltd (the Related Companies) under an implied licence. By virtue of this, the Applicant argued that it had acquired goodwill under the mark.
Retaliation
In retaliation, the Proprietor put the Applicant to proof of this claimed goodwill and stated that the examples of use provided by the Applicant to illustrate earlier rights showed, if anything, use by the Related Companies rather than the Applicant. In particular, an extract from an online spirits retailing website from 2019 post-dated the start of these proceedings and was discounted by the Hearing Officer (HO).
In its observations, the Proprietor lodged evidence showing that there appeared to be no corporate connection between the Applicant and the Related Companies. Consequently, it argued that there was no possible basis on which the Applicant could claim the benefit of any goodwill generated by the Related Companies. Curiously, the HO noted that in the Applicant’s statements of account submitted for the period December 2007 to December 2016, there was no provision for the acquisition or amortisation of goodwill or any record of the Related Companies.
The Applicant’s pleaded case was that The Original Loch Ness Whisky Company Ltd was a wholly owned subsidiary of the Applicant and by virtue of this there was an implied licence. The Proprietor’s evidence was able to show that this was not the case.
In fact, the Applicant did not appear to have ever owned shares in The Original Loch Ness Whisky Company Ltd. The Proprietor was also able to present evidence showing that The Original Loch Ness Whisky Company Ltd filed dormant company accounts between 2009 and 2016, the years leading up to the relevant dates.
Given all of this, it was the HO’s assessment that the Applicant was not able to show that it was the owner of any goodwill generated from use of the LOCH NESS mark in relation to whisky and this was “sufficient reason” for the ultimate decision to reject the Applicant’s invalidity claims.
Key points
- The HO in this decision was quite critical of the Applicant’s lack of evidence to substantiate its prior rights claims
- Invalidity applicants should heed this warning and ensure there is sufficient evidence available indicating prior use/ownership of unregistered rights before commencing invalidation proceedings