PS love your trademark

A recent claim filed before the High Court emphasises why it is important to make use of a trade mark following registration.

Phil Smith Be Gorgeous Limited, a hair and beauty business (Phil Smith), recently filed a trade mark infringement claim in the High Court against fashion giant Primark, in relation to the unauthorised use of its PS Love Your Hair trade mark. The UK trade mark was registered in 2011 by Phil Smith in respect of class 3 goods (broadly, beauty products).

Primark has been using the PS Love Your Hair mark for some time as part of its PS line which also includes a broad range of products such as PS Nudes Eyeshadow, and more specifically the PS Love Your Nails and PS Love Your Skin. In a counter-move, separate from the trade mark infringement claim, Primark has applied to cancel Phil Smith's trade mark registration on the grounds of non-use.

In law, a trade mark is vulnerable to cancellation if it has not been put to genuine use in the UK by or on behalf of the owner within the period of five years following registration, (or otherwise for any continuous five year period during the period of registration) where there are no proper reasons for non-use.

Phil Smith has yet to launch a line of products or services under the PS Love Your Hair mark. However, a holding page on Phil Smith's website states that PS Love Your Hair is "coming soon". Despite the publication of the holding page, Phil Smith may still need to prove that it possesses a reputation or goodwill in the mark.

In defence of Primark's action to cancel its trade mark registration, Phil Smith will need to show that its use of the PS Love Your Hair trade mark is genuinely commercial and not just token. Unless Phil Smith is able to produce clear evidence of use of the trade mark in relation to the goods for which the mark is registered, it will need to argue that the genuine use intention is satisfied through examination of the facts.

If the Intellectual Property Office considers that the "coming soon" page does not constitute "genuine use" of the trade mark, Phil Smith will struggle to uphold its registration of the mark.

Phil Smith may have avoided what could become a costly and time-consuming legal battle by carrying out a periodic review of its trade mark portfolio to highlight any registrations vulnerable to cancellation. Shoosmiths recommends that the following points are considered during a review:

• has the trade mark been genuinely used to at least a reasonable degree in the last few years?
• has the trade mark been used in relation to goods and/or services covered by the registration that are currently marketed or planned to be marketed?
• is there satisfactory evidence to prove use of the registered trade mark?
• are there any goods and/or services currently marketed or planned that are not covered by the registration?
• does the form of the trade mark as being used match the form registered?
• is the trade mark being used by the registered owner? If it is being used by a group company or third party, is there a licence in place?
• is the trade mark being used, or might it be used in the future, in a country or countries where it is not yet registered or an application filed?

It is also important that trade mark owners take steps to police and enforce their rights in their registered brands. Allowing a third party to use a registered trade mark can damage the reputation in the mark and dilute its value.

Primark could have taken steps to mitigate its current situation by carrying out a trade mark search before launching the products in question under the PS Love Your Hair mark. Conducting an appropriate search of the relevant trade mark registers will generally reveal any pre-existing trade marks which could prevent a company's registration or use of a particular mark and/or whether such use will infringe a third party's registered trade mark and therefore, expose the company to court proceedings. Shoosmiths' dedicated team of Intellectual Property lawyers and trade mark attorneys can conduct relevant searches before clients adopt a new brand, helping them to avoid any conflict with existing registrations.

We have developed a specialist trade mark strategy for our clients, allowing effective brand protection and management and which enables serious issues to be dealt with quickly and cost effectively. A rapid response not only helps trade mark owners to develop and protect their brand, but also increases the possibility of successfully claiming certain remedies such as interim injunctive relief.

If you would like to speak to one of our team about the issues raised in the above article or regarding brand protection please contact the writers.