A recent decision from the Appointed Person considered whether the use of two parts of a composite mark placed separately in two different locations on a shoe constituted use of the mark as registered, and concluded that this did constitute genuine use.
SDI (Wigan) IP Limited (SDI) is the owner of UK registration no. 1399292 for this mark:
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Travel Fox International Incorporation (TFI) applied to revoke the mark on the basis of non-use. First the Hearing Officer and then the Appointed Person considered a number of issues around the evidence of use which was submitted, the most interesting of which was the question concerning the way in which the mark had been used.
The evidence submitted showed the mark as used on trainers. However, the words TRAVEL FOX appeared on the tongue of the trainers, and the device element appeared on the side of the shoe, slightly below the eyelets.
TFI and the Appointed Person agreed that minor changes in the relative placement of the words and the device element (such as placing the device above or below the words, rather than next to them) would not change the overall distinctive character of the mark, and that such use would therefore constitute genuine use. However, the Appointed Person did not concur with TFI’s argument that use where the two elements were spatially remote (e.g. on the tongue and on the side of a shoe) altered the distinctive character, and did not constitute genuine use.
The Appointed Person took the view that there was nothing in the trade mark to suggest that the precise spatial positioning of the two elements was important. If the spatial position of the two elements is not important, and if positioning the two elements slightly differently would not alter the distinctive character, there was no reason to think that placing the two elements further apart would alter the distinctive character of the mark.
This decision would seem to be positive for brand owners looking for flexibility in how they use their marks. If a brand owner decides to break up two elements of a mark and use them in different places (though still on the same product), it may not be essential to re-register the separate elements of the mark. (Although presumably that would not apply to composite marks where the distinctive character relies on the combination of the elements, rather than composite marks such as the one at issue in this case where each element has its own independent distinctive character.)
This decision avoids setting arbitrary limits on how far apart two elements of a composite mark can be used and still count as genuine use. This at least avoids the tribunal having to get the callipers out to measure the distance between the different elements of a mark. And yet, a more qualitative approach could still have been taken here. Surely there must be a difference between using two elements of a mark next to each other (even in varying relative positions) and using the two elements in two tangibly different locations on a product. A registration such as the one in question looks like a lockup. Whilst there are clearly different elements to the mark (the words and the device), the registration protects the combination of those elements. Use which doesn’t look like a lockup, and which looks like two separate marks used in two separate places, affects the distinctive character of the mark sufficiently that it shouldn’t constitute use of the mark.