Van Cleef & Arpels S.A. ("the Proprietors") are a supplier of fine jewellery and luxury watches sold under the Van Cleef & Arpels (VCA) trade mark. Established in France in 1896, VCA and their predecessors in title have been trading for over 100 years. FMTM Distribution Limited ("the Applicants") own, amongst others, the "Franck Muller" trade mark for watches.
The mark at issue is "MYSTERY SET", covering Class 14 jewellery and watches ("the Subject Mark"). The Applicants filed an application for revocation of the Subject Mark on the ground that it had not been put to genuine use, under Section 22(1)(a) of the Trade Marks Act (Cap. 332) ("TMA").
One of the main thrusts of the Applicants' attack is that "MYSTERY SET" has not been used by the Proprietors in a trade mark sense, but as descriptive of the technique employed by jewellers for setting gemstones in such a way that no prongs are visible.
The revocation failed in relation to jewellery, but partially succeeded in relation to watches, as no evidence was tendered by the Proprietors in relation to this item.
With respect to jewellery, the Registrar found that the Subject Mark had been used in the trade mark sense. He emphasized that the trade name of the technique (the setting of stones) is "invisible setting", and the terms "MYSTERY SETTING" or "MYSTERY SET" were coined by the Proprietors to describe a variant of the technique which had been patented by them. The terms "MYSTERY SETTING" or "MYSTERY SET" were not directly descriptive of the technique. Rather, they described the mysterious aura exuded by gemstones in such a setting, and can thus be considered to be at most allusive of the invisible setting and in turn, jewellery.
This case raises an interesting issue of a potential challenge an accomplished trade mark owner may face. A trade mark's very establishment and success may lead to a possible claim of general use of the mark to refer to, or to describe the characteristics of the product itself, and not as an indication of commercial origin.