Apple has successfully fended off 68 non-use revocation actions by establishing at two UKIPO Case Management Conferences (CMCs) that the revocations were an abuse of process.
The UK IPO’s Head of Trade Marks, Allan James, presided over the CMCs, at which he assessed the history and motivations of the applicants for revocation. These were a set of companies all linked by Michael Gleissner, whose exploits have been commented on in other IP discussion forums. Gleissner’s companies have launched a torrent of actions against Apple: at the EUIPO, where 120 revocations remain pending, at the Benelux IPO, where they have filed applications to register various of Apple’s trade marks, as well as these 68 UK revocations.
It seems the conflict kicked off when Apple vigorously defended applications by Gleissner to revoke registrations for SHERLOCK in Singapore and elsewhere. Gliessner appears to have had a genuine interest in the SHERLOCK mark. Mr James found that the motive for the UK revocations was to put so much pressure on Apple’s legal resources that they would give up the SHERLOCK marks.
Gleissner suggested that he was fulfilling a sort of Robin Hood role of freeing up trade marks unfairly hoarded and unused by Apple. While Mr James had some sympathy for the concept that the revocation of unused marks is of public benefit, Mr Gleissner’s history weighed against such a generous interpretation of his motives.
Importantly, none of the UK marks at issue was SHERLOCK, so Mr James concluded that he could follow guidance issued in Goldsmith v Sperrings, namely that: ‘if it can be shown that a litigant is pursuing a ulterior purpose unrelated to the subject matter of the litigation and that, but for the ulterior purpose he would not have commenced proceedings at all, that is an abuse of process’. The SHERLOCK mark was unrelated to the marks under revocation, and were it not for the SHERLOCK matters these revocation actions wouldn’t have been initiated, and so these revocation actions were an abuse of process.
It’s not an abuse of the trade mark system to bring 68 revocation actions at once, nor to bring revocation actions where you are unable to show sufficient interest in the marks yourself. It is, however, an abuse of process to use the trade mark system as a tool to achieve an aim totally unrelated to the matter being heard.
It’s interesting to consider just how much Mr Gleissner’s history and reputation affected this decision. While the reasoning seems sound, we could ask whether the fact that the SHERLOCK cases and these UK revocation actions deal with the same parties and the same question of genuine use means that actually they are not unrelated. Perhaps another applicant would have met with another result. In any event, we’ll be watching Mr Gleissner’s other endeavours with interest.