This case concerns the extent to which a low level of evidence can be challenged as not being sufficient to establish genuine use, following an application for revocation of a registration on the grounds of non-use.
In 2002, Mr Kevin Dakin, who was a former amateur racing champion, registered the trade mark SQUADRA and design (see below) in respect of bicycles in Class 12:
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In 2010, Condor Cycles Ltd filed an application seeking revocation of this mark on the grounds of non-use. They alleged that extensive enquiries had been undertaken and no evidence of use of the registered mark could be found.
In Mr Dakin’s evidence, he claimed to have produced and sold high quality bicycles on a continuous basis since 1992. He claimed that the mark in question was used in the form as registered on the frame of the bicycles and was also represented on invoices and part of the general promotion of the SQUADRA business. Mr Dakin’s bicycles currently retail for between £4,000 and £12,000 and he provided sales figures for every year between 1992 and 2011. Twenty invoices from around the UK were exhibited dating from 2002 to 2009, with prices from £700 upwards for the bicycle frames.
The evidence from the applicant for revocation merely challenged the veracity of Mr Dakin’s evidence, both in terms of the dates that appeared on some documents and an allegation that the invoices may have been fabricated for the purpose of these proceedings due to an incorrect value added tax (VAT) reference.
Mr Dakin filed two witness statements in reply. In these, he stated that there had not been a continuous period of five years during which the mark had not been used. However, he also explained that he was a small business and many of the documents relating to the relevant five year period were no longer available to him, or were no longer in existence, including, for example, business cards that were used from 2000 until 2008. He also supplied copies of Facebook pages with photographs of individuals to whom he had sold his bicycles, where the mark in question could be clearly seen.
The hearing officer considered all of the leading authorities in seeking to reach a conclusion as to whether or not Mr Dakin had effectively established genuine use. She noted in the case of HIPOVITON that “the smaller the commercial volume of the exploitation of the mark, the more necessary it is for the party … to produce additional evidence to dispel possible doubts as to its genuineness”.
However, in reaching a decision that Mr Dakin had shown the mark to be used within the relevant period, she expressly referred to the comments of Mr Richard Arnold QC sitting as the Appointed Person in the case of EXTREME where he considered evidence and a witness statement which was not “obviously incredible”. In this case, he indicated that it was up to the opposing party to either give the witness advanced notice that his evidence would be challenged, or challenge the evidence in cross-examination or produce evidence to contradict the witness statement in question. Without doing so, he confirmed that it is not open to the opposing party to invite the tribunal to disbelieve the witness’s evidence.
The Hearing Officer concluded that, whilst Mr Dakin’s evidence was not complete or comprehensive, she did not find it “obviously incredible”. Indeed Mr Dakin had provided an explanation for the paucity of evidence. In the circumstances she had to determine the matter on the balance of probabilities.
Failure of the applicant for revocation to file greater evidence, or to cross-examine Mr Dakin (they did not attend the Hearing, nor file written submissions in advance of the Hearing), may have contributed to the decision to reject the application for revocation.
The case confirms that it is not uncommon to find parties in proceedings before the Registrar making submissions about unchallenged evidence which, in effect, amounts to cross-examination of a witness in his absence and then invite the Hearing Officer to disbelieve or discount the evidence. Mr Richard Arnold QC stated in EXTREME that hearing officers should guard themselves against being beguiled by such submissions.
Although the registration was saved, it is interesting to note that Condor Cycles still appear to be offering for sale bicycles under the SQUADRA trade mark. Either the parties have resolved their differences and reached some kind of agreement, or the dispute is rumbling on and we may see the next instalment before the Courts.