Retail team member Sarah Neil reviews a recent UK IPO decision which assesses what kind of use is sufficient to make a party the ‘senior user’ of a mark.
The matter started in early 2014 when ABP Technology Limited (“ABP”) developed a range of Virtual Reality headsets under the mark STEALTH VR and began promoting them to suppliers, with sales of those headsets beginning December 2014. In June 2014, Voyetra Turtle Beach, Inc (“VTB”) promoted a gaming headset under the mark STEALTH at the E3 conference in California, several months after ABP first started promoting its goods. VTB first sold these headsets in the UK in October 2014, two months prior to ABP’s first sales.
On 6 February 2017, ABP filed a UK application for the mark STEALTH VR which was granted without opposition. VTB filed an application for its mark STEALTH on 16 March 2018 and simultaneously filed to cancel ABP’s registration based on their prior use of the STEALTH mark. ABP filed opposition against VTB’s application based on its 2017 registration and VTB counter-claimed with invalidity proceedings. The matters were consolidated with both parties agreeing that the opposition would stand or fall with the invalidity action. Both parties claimed use of the mark which pre-dated their respective applications for registration.
The relevant date for the invalidity proceedings should have been 6 February 2017. VTB’s claim was that as of 6 February 2017 it could have precluded ABPs use of the mark under the laws of passing off. However, as ABP claimed use prior to the date of its application, the effective date for the invalidity proceedings was brought forward to the date of ABPs first actionable use.
The question for the Hearing Officer became “which party is the senior user?” ABP claimed that it was the senior user based on the promotion during Spring and Summer 2014 arguing that the senior user is the first party to make external use of the mark targeted at the UK. VTB claimed it was the senior user as it was the first to make a sufficient volume of sales to generate goodwill arguing that the senior user is the first party to generate enough goodwill to allow it to bring a passing off action.
The Hearing Officer determined that the correct way to establish the senior user is to work out when ABP’s first actionable use of the mark was made. It is then for VTB to show that it had sufficient goodwill to bring a passing off claim as of the date of the first actionable use. The Hearing Officer found that the promotion of the goods and negotiations with suppliers could have been the subject of an injunction therefore making the first actionable use somewhere in early – mid 2014. The fact ABP did not have goodwill at this stage was irrelevant. VTB’s protectable goodwill was deemed to commence as of 13 October 2014, the date of an invoice from VTB to GAME. As this is after the date of ABP’s first actionable use of the mark, VTB could not have succeeded in a passing off action against that use thus making ABP the senior user of the mark.
The decision has been appealed.