The Carlyle hotel in New York has had its UK trade mark, THE CARLYLE, revoked by the IPO on the basis of non-use within the UK.

The mark was registered with the IPO on 10 December 1999 in respect of hotel, restaurant, cabaret, cocktail lounge, banquet facilities and health spa services within Class 42. On 18 June 2008, the IPO received an application from Mascha & Regner Consulting KEG for the registration to be retrospectively revoked from 11 December 2004 on the basis that, in terms of the relevant legislation, the mark had not been genuinely used within the UK in relation to the goods or services for which it was registered within the period of five years following the date of completion of the registration procedure.

The onus was on The Carlyle to demonstrate to the UK Trade Marks Registry that the mark had in fact been used within the relevant five year period, or that proper reasons existed for its non-use.

The Carlyle argued that, although the hotel was situated in New York and could not be said to provide hotel services or facilities in the UK, there had been a genuine use of the mark in the UK on the basis that the hotel had been actively advertised and marketed in the UK within the relevant period. It went on to provide that, in addition, the hotel had a sales office in London through which UK customers could make reservations.

The Carlyle was ultimately unsuccessful. The Registry focussed its assessment of the case on the genuine use of the mark and found that, whilst several newspapers and magazines in the UK mentioned the hotel and some of its facilities, the articles were, at best, simply reviews of visits that third parties had paid to the hotel, and there was no evidence to show that the hotel had itself advertised or marketed its facilities in the UK. In terms of the London sales office, the Registry found that, whilst there was evidence that UK customers had stayed in the hotel during the relevant five year period, there was no evidence supporting how these stays had been booked or arranged, and whether they had in fact been booked through the London sales office. In addition, the sales office was operated by Rosewood Hotels & Resorts LLC who have ultimate control of The Carlyle, and was used to take bookings for all hotels within the group rather than being specifically or exclusively used for bookings at The Carlyle.

The Registry therefore concluded that there was no evidence to show that, within the relevant five year period, the registered proprietor of the mark had genuinely used the mark in the UK in respect of any of the services listed in the application. Accordingly, the mark was revoked in full with effect from 11 December 2004.

This serves as a reminder to those with trade marks registered in the UK to ensure that their mark is put to genuine use in the UK by them or their licensee(s) within the period of five years from the date of registration in order to avoid loss of the mark through non-use proceedings brought before the Registry by a third party. Proprietors who do not make frequent use of their trade marks should document any use of their mark to substantiate its genuine use should the need arise at a later date.