In April 2016, Vivo Intenational (“Vivo”) applied to register the mark VIVO covering television production services and video on-demand services in class 41. TiVo Brands (“TiVo”) opposed this application, but the opposition was initially refused. TiVo then appealed this decision to the Appointed Person (“AP”) on a question around the evidence of use which it filed.
TiVo is a streaming service and set-top box provider that enables users to store content (television shows, movies etc.) It is offered via Virgin Media.
TiVo sought to rely on two trade mark registrations for TiVo covering classes 9, 16, 35, 38 and 41, and TIVO covering classes 9, 38 and 41. Both of these registrations were vulnerable to cancellation on the basis of non-use.
The opposition against Vivo’s application was based on S.5(2)(b) and 5(3) of the Trade Marks Act 1994. Vivo put TiVo to proof of use of its marks.
Evidence of use
In response to the proof of use requirement, TiVo submitted evidence that consisted of a Witness Statement in the name of its solicitor, Mr Bolter, together with various annexes. The evidence included articles downloaded from legal databases, various newspaper and other articles referring to services offered by Virgin Media, which include references to the TiVo box. No evidence was filed relating to sales of the goods covered by classes 9 or 16.
The Hearing Officer concluded that, as a whole, the evidence failed to show use of TiVo in relation to the goods or services covered by the rights relied on. Whilst there were a number of references to the mark TiVo in the context of services offered by Virgin Media, it did not show use of the TiVo marks by TiVo, or by a third party under licence. Consequently, the Hearing Officer found that the test for genuine use was not met in relation to any of the goods and services covered by the earlier rights, and the merits of the opposition were not considered further.
Appeal – admissibility of new evidence
TiVo appealed, submitting that the evidence of use was sufficient, and that the Hearing Officer should have found that the marks had been used across all classes bar cl. 35. TiVo also sought to introduce fresh evidence on appeal consisting of the Witness Statement of Pablo Rojas, the Vice President of a company connected to TiVo.
Crucially, the new evidence was not submitted with the grounds of appeal and no reasons were provided as to why the evidence was not filed in the original proceedings.
On appeal, Amanda Michaels sitting as the AP, considered the factors laid down in Ladd v Marshall (1954) 1 WLR 1489, regarding the admission of fresh evidence on appeal, namely whether:
- the evidence could not have been obtained with reasonable diligence for use at the hearing;
- the further evidence if admitted, would have an important influence on the outcome of the case;
- the evidence is such as is presumably to be believed.
There are also some overlapping considerations which include, the significance of the evidence, the nature of the mark, whether the evidence could have been filed earlier, and if not what are the reasons given for the delay, the need to avoid multiplicity of proceedings and whether the other side will be prejudiced by the admission of the new evidence.
After considering the above, the AP did not admit the new evidence into proceedings because it was filed late with no proper explanation and suffered from significant defects.
Assessment of existing evidence
In terms of the Hearing Officer’s assessment of the evidence, the AP reached the same conclusion in respect of classes 16, 38 and 41. The AP was prepared to accept certain facts referred to in Mr Bolter’s evidence, for example, the fact that TiVo had entered into an agreement with Virgin Media. Ultimately, however, it was found that beyond confirming the existence of an agreement, the evidence did not sufficiently show the nature of the agreement or that the marks were used in relation to the relevant goods and services.
Whilst it was also accepted that the evidence showed that millions of Virgin Media’s customers had subscribed to TiVo, it did not show use in relation to any of the services covered by the earlier TiVo marks.
That said, the AP found that the evidence supported some use in relation to goods in class 9, specifically “software for personalised interactive television programming”. On this basis, the opposition has been remitted to the UKIPO for a fresh hearing.
What is interesting about this case is that TiVo is a relatively large commercial party, who is clearly using its marks in relation to a wide range of goods and services. It is therefore perhaps surprising that the evidence submitted was not more robust in this case.
The fact that the fresh evidence was not admitted is not surprising given the facts of the case and in view of the fact that TiVo did not properly substantiate its request by giving sufficient reasons why the evidence was not available at an earlier stage in the proceedings.
Nonetheless, the case serves as stark reminder for big brands that when required to prove genuine use of their trade marks. It is essential that the evidence as a whole adequately shows the mark(s) being used in relation to the goods and services covered by the specification. It sounds obvious but here, TiVo’s case fell down because its evidence was too general, and did not show provide sufficient examples of use of the marks by TiVo for the relevant goods and service. Evidence needs to be specific, rather than general.
It will be interesting to see how the evidence is assessed in respect of the S.5(3) claim when the case is remitted to the UKIPO.