In an appeal of revocation and related opposition proceedings from the UKIPO, the High Court has given consideration to whether passive sales can demonstrate trade mark use. The court determined that where sales are pulled into the UK by consumers who happen to reside there rather than being sought within the UK, there will not be use of any UK trade marks.

Background

In this case Abanka DD (”Abanka“), a Slovenian bank, has had two international trade marks protected in the UK, for ABANKA, registered since March 2006, with specifications covering a broad range of financial services. Abanka did not hold a UK banking licence and its clientele in the UK were primarily Slovenian nationals.

Abanka opposed a UK application by Abanca Corporacion Bancaria S.A. (“Abanca“) to register ABANCA in classes 9, 16, 35, 36 and 38, on the basis that there would be a likelihood of confusion with its earlier registrations (under s. 5(2)(b) of the Trade Marks Act 1994). Abanka did not argue passing off or suggest it had sufficient goodwill in the UK to do so.

Abanca contested the opposition and filed a revocation action against Abanka’s marks in the UK on the basis of non-use.

The Hearing Officer found at first instance that Abanka has not been able to prove use of its marks in the UK in the relevant period so, accordingly the marks were revoked in their entirety, in the UK and, as a consequence, the opposition to Abanca’s application was dismissed.

Evidence of use

Since Abanka’s customers were almost exclusively Slovenian nationals, and since Abanka lacked a licence to undertake many regulated activities in the UK, its use was necessarily going to be limited. As the Hearing Officer noted “A customer using a credit or debit card abroad does not mean the ‘home’ bank has a presence on the banking market wherever the card is used“.

Nonetheless Abanka introduced some evidence of use, including some 80 debit and credit card holders who used their cards in the UK over a six year period, advanced payment guarantees, a flotation on the London Stock Exchange, some online use on the Abanka website and minor press coverage in a UK publication.

The Judge weighed the evidence but found that it was not persuasive of use in the UK by Abanka itself. Although some Slovenian customers received credit or debit cards it seemed that this was primarily a Slovenian banking service, even where the individuals were residing in the UK. With regard to the website the fact that it was in English was simply insufficient to demonstrate that it was targeted at UK consumers, absent any other factors. The issuing of cheques and guarantees bearing the ABANKA trade marks to UK organisations, was found to be similarly unimpressive as evidence of trade mark use.

On one point however the Judge did consider there was some evidence of genuine use. This arose in relation to the London Stock Exchange listing for an issue of Euro denominated bonds, which, though small in the scale of such transactions, was sufficient to demonstrate use in that category as any decision to purchase the bonds would be based upon Abanka’s reputation. The Judge therefore overturned the Hearing Officer’s determination on that point only, accepting that there was use of the ABANKA mark in the relevant period by either Abanka or an entity authorised by it in respect of the issue of Euro denominated bonds.

The Judge considered related decisions on the marks in France, Spain and Switzerland and, whilst the Eurobonds aspect did not arise any of those jurisdictions, he found that the reasoning in each case was aligned with his own, noting that decisions could vary but that it was nonetheless helpful that neither he nor the Hearing Officer were materially out of line with the prevailing trend elsewhere in the EU.

Conclusion

The matter of the opposition still remains to be determined and since the scope of the permissible registration in the UK is now very narrow, it may be the case that the proposed registrations will not be deemed confusingly similar, particularly given the likely sophistication and discrimination of a target customer base for bonds. The is likely to be referred back to the registrar for determination and a further hearing may take place if the parties do not come to an agreement on the outstanding points relating to the scope of the ABANKA registrations in the UK and the permissibility of the ABANCA ones.

A useful case for the precedent bank?

The case is a useful reminder that not all use of a product or service within a jurisdiction will amount to trade mark use. A sophisticated analysis may be needed to show that sales are active, not passive and that reputation is being developed and to some extent relied upon by a UK customer base, rather than a customer base that may, on occasion, be in the UK.

Case Ref: [2017] EWHC 2428