Alice Limited v Photogram Limited & Ors

This is judgment on liability only in a trade mark infringement claim relating to the word mark ALICE and counterclaim for revocation of that mark, following a one day trial in IPEC.

The Claimant is the proprietor of the mark in question which is UK registered Trade Mark Registration No. 3,362,772 for the word mark ALICE filed on 21 December 2018 and registered on 22 March 2019 in respect of “Apparatus for recording, transmission or reproduction of sound or images; audio apparatus; signal-mixing apparatus and instruments; sound recording and sound reproducing apparatus and instruments; signal-mixing, sound recording and sound reproducing apparatus and instruments for use in radio and television broadcasting” in Class 9 and “Repair, maintenance and refurbishment of apparatus for recording, transmission or reproduction of sound or images, audio apparatus, signal-mixing apparatus & instruments, sound recording apparatus & instruments and sound reproducing apparatus & instruments” in Class 37 (the “Alice Mark”).

As I will come to explain, the Defendants accept that the First Defendant has infringed the Alice Mark at least in the period from the commencement of its business in March 2020 until 22 March 2024, which is a date 5 years after the date of registration of the relevant mark, after which it became susceptible to revocation on the grounds of non-use. After this date the Defendants were permitted to amend their defence and counterclaim for such revocation. The Second to Fourth Defendants accept they are joint tortfeasors with the First Defendant and so jointly and severally liable with it for any infringement. However, even if revoked, such revocation will take effect only from 23 March 2024 at the earliest, and it does not affect the Defendants’ liability for prior acts of infringement before this date.

This case is therefore about whether the Alice Mark was put to genuine use in the first five years of its revocation, and so whether it is liable to revocation in whole or in part.

The Claimant was represented by Dr David Ivison and the Defendants by Mr Aaron Wood. I am grateful to them for their written and oral submissions.

The Claimant is a company incorporated in England and Wales on 15 November 2016 with the company number 10479545. It is a business which designs and manufacturers a range of electronic equipment. There is a dispute about whether that is audiovisual equipment or audio equipment, which goes to the question of whether there has been genuine use of the Alice Mark across the scope of the specifications.

The First Defendant is a company incorporated on 12 June 2019 in England and Wales with the company number 12046009.

The First Defendant has carried on a business offering, advertising and selling a still and video camera for capturing still images and video in the United Kingdom (“Alice Camera”) under and by reference to the signs “ALICE CAMERA” (“AliceCamera Sign”) and “ALICE” (“Alice Sign”) (together, the “First Defendant’s Signs”). This is a digital camera which attaches to a smartphone.

The other defendants are directors of the First Defendant and each hold 33% of the issued share capital of the First Defendant. They all describe themselves as co-founders of the First Defendant.

The Claimant alleges, and the Defendants admit save as noted otherwise, that:

The Defendants admit that the First Defendant’s cameras have the Alice Sign affixed to them and that the packaging of the cameras also has the Alice Sign and/or the Alice Camera Sign affixed to it. They plead that they have written in open correspondence to the Claimant’s representatives before the claim was issued to indicate that following receipt of the complaint they intend:

As noted, the Claimant pleads and the Defendants accept at paragraph 6 of the Amended Defence and Counterclaim subject to their counterclaim, that by affixing the Alice Sign to cameras or their packaging; offering or exposing the cameras for sale under the Alice Sign; exporting cameras under the Alice Sign or using the Alice Sign on business papers and in advertising, the First Defendant has infringed the Alice Mark contrary to section 10(1) of the Trade Marks Act 1994 (“TMA”). They further admit at paragraph 7 of the Amended Defence and Counterclaim that by those acts complained of, the First Defendant has infringed section 10(2) TMA.

The Claimant pleads, and the Defendants accept, that the Alice Camera Sign consists of two parts “ALICE” and “CAMERA”, of which “ALICE is the dominant and distinctive part and “CAMERA” is purely descriptive when used in relation to a camera. It further accepts that the Alice Camera Sign has been used in relation to cameras, which are goods identical to the Class 9 “apparatus for recording transmission or reproduction of… images” in respect of which the Alice Mark is registered. It denies that the First Defendant’s use of the Alice Camera Sign in the same ways as set out in paragraph [[12]] above infringes the Alice Mark contrary to section 10(1) TMA as it denies that the Alice Camera Sign is identical to the Alice Mark. It further denies that such use of the Alice Camera Sign infringes the Alice Mark contrary to section 10(2) TMA.

In its initial Defence filed on 24 October 2023, the Defendants advanced a bad faith attack on the validity of the Alice Mark. That was struck out by HHJ Hacon on 13 June 2024, and he allowed the Defendants to serve an amended Defence and Counterclaim.

The Claimant seeks, inter alia, a declaration of infringement of the Alice Mark; injunctive relief; an order for delivery up alternatively destruction of all articles which would breach the injunction; and damages or alternatively at its election an account of profits arising from the trade mark infringement.

The Defendants accept that if and to the extent that the Claimant’s claim succeeds, the Claimant is entitled, inter alia, to an order that the acts complained of infringed; to an injunction to prevent the recommencement of such acts; and an order for delivery up or destruction. They do not admit that the Claimant has suffered loss and damage by reason of the First Defendant’s acts of infringement. However, their denial of the Claimant’s assertion that they threaten and intend to continue the acts complained of unless restrained by the Court cannot survive the admissions made by the Third Defendant that they do.

The Defendants applied to the UKIPO for revocation of the Alice Mark in April 2024 (cancellation number CA000507189), i.e. after the claim had been issued and proceedings were on foot in IPEC, pursuant to sections 46(1)(a) and 46(1)(b) TMA on the basis that it had not been the subject of genuine use in either class 9, where infringement had been alleged by the Claimant, and in class 37, where it had not. That was dismissed by the IPO, with costs, pursuant to s46(4)(a) TMA which provides that where proceedings concerning the trade mark in question are pending in the court, the application for revocation must be made to the court, and not the registrar.

The Defendants were permitted to file an Amended Defence and Counterclaim in which they seek a declaration that the Alice Mark is invalid in its entirety (or, alternatively, in respect of “Apparatus for recording, transmission or reproduction of sound or images”) and is revoked with effect from the earliest of:

The Claimant in its Amended Reply and Defence to Counterclaim pleads that it has put the Alice Mark to genuine use in respect of the goods and services of its specification in the period covered by the Defendants’ counterclaim for revocation. It denies that the Alice Mark is liable to be revoked as alleged in the Counterclaim, but pleads that if it were, the Claimant would seek to amend the specification pursuant to section 46(5) TMA, and will rely on such amended specification if and to the extent necessary, in respect of its claims of trade mark infringement.

The list of issues is set out in the Schedule to the case management order of His Honour Judge Hacon dated 12 June 2024:

The Claimant relies on the evidence of Paul Andersson, its managing director. He signed the Amended Particulars of Claim and Amended Reply and Defence to Counterclaim, which stand as evidence in IPEC, gave a witness statement dated 22 July 2024, a short additional witness statement dated 23 October 2024 clarifying one aspect of his earlier witness statement, attended court and was cross-examined and re-examined. I found Mr Andersson to be a good witness, straightforward and honest and Mr Wood confirmed for the Defendants in closing that he had no criticism to make of him.

Mr Andersson’s evidence is that the original Alice business was operated through a company called Stancoil Limited from 1969, which was founded by Edward Fletcher, who also established the Alice brand. He says that Mr Fletcher designed and manufactured complete professional audio systems for Jesus Christ Superstar at the Palace Theatre in 1972, the three theatres of the National Theatre on the South Bank, and a large number of other installations in theatres and studios throughout the world, the audio systems of which all bore the Alice mark. The Alice business was later operated through a company called Alice Soundtech Ltd. Mr Andersson says that his own background is as a broadcast engineer, working for the BBC in that capacity for 25 years, during which he said he became very familiar with Alice products such as mixing desks. When he left the BBC he became an independent broadcast design and installation engineer and continued to use Alice products on installations. Mr Andersson says that following Alice Soundtech Ltd ceasing trading in February 2016, Mr Andersson incorporated the Claimant company in November 2016 and began to acquire assets associated with the Alice brand, in order to rebuild the brand, re-manufacture products well known throughout the industry, and design and sell new products. The Claimant has also employed Mr Edward Fletcher since 2020. None of this evidence was challenged in cross-examination and I accept it.

Mr Andersson’s evidence of use is that the Claimant has been selling audio hardware products bearing the Alice Mark to customers in the UK and internationally since 2018 and has been selling audio-visual hardware products throughout the UK since 2019. In cross-examination he agreed that the change to selling audio-visual hardware products was a reference to the introduction of the Alice Longitudinal Timecode Distribution Amplifier (“Timecode DA”). I will come back to that.

Mr Andersson provides a list of the Claimant’s products offered for sale to customers during the relevant period at paragraph 9 of his first witness statement. This shows: 12 different broadcast consoles and mixing desk products, plus the Alice 28 Series which is a broadcast console for bespoke builds; 8 products in the Claimant’s pre-amplifier “PAK Range”; 5 products in its “Rack Range” including a stereo compressor, a forward compression amplifier, two distribution amplifiers and the Timecode DA; 6 products in the “500 Lunchbox Series”, being an audio compressor, pre-amplifiers, and an audio equaliser; and several miscellaneous products including a microphone extender and peak programme meters (“PPMs”). The Claimant has provided datasheets and technical information for these products which Mr Andersson says are also available to download on the Claimant’s website.

Mr Andersson’s evidence in his first witness statement is that all of these products display the Alice Mark on their face, except those which are sold under the Claimant’s sub-brand “Pye” which say “Alice Ltd” on the rear of the product. However, in his second witness statement he clarified that the Claimant also sells some third party products which do not carry the Alice Mark, which he described as a very minor part of its business. He said some of these were spare parts of low value such as Penny & Giles fader knobs, but sometimes they were more costly items such as Yello Tec microphone arms, at £250 each. He said such third party products were made available to customers of the Claimant’s own products branded with the Alice Mark, or the Claimant’s services provided under the Alice Mark, in order to provide them with a convenient “turnkey” solution, but were not retailed or distributed as a freestanding item. He thought they generated about £10,000-£20,000 of revenue per year but no significant profit. I have seen invoices bearing the Alice Mark in the Claimant’s disclosure which show that it sold such third party goods, and I am satisfied that it did so as part of the Claimant’s business and under the Alice Mark.

Mr Andersson exhibits printouts from the Claimant’s website from 2019 to December 2023 (obtained by use of the Wayback Machine) showing the Claimant’s (but not the third party) products for sale and including photographs of certain products which show use of the Alice Mark upon them. Mr Andersson also exhibits printouts from the websites of its six third party UK distributors showing that they each carried and offered for sale to the public certain of the Claimant’s products carrying the Alice Mark at the Relevant Period. I accept that the Claimant’s products offered for sale on the UK market from its website and through third party distributors all had the Alice Mark upon their face, except for the PYE products which had it on the rear of the product, and that all of them were offered for sale under the Alice Mark.

I have heard about one order of products (the Alice Tieline MHB which is a microphone input extender) which Mr Andersson said the customer required to be sold with the client name on them, so the Claimant made a batch of 25 to that specification. Accordingly the physical product in that order was not branded with the Alice Mark, but nonetheless I am satisfied they were offered for sale under the Alice Mark and invoiced with an invoice bearing the Alice Mark. Mr Andersson was also questioned about several products for which the Defendants could not locate invoices. He said that some of them, such as the Alice Air 2016 Quad Guest Headphone Amp, had been supplied as part of mixing desks, and not sold as a standalone product, so he was not surprised that there were no individual sales visible in the invoices. I accept that evidence.

Mr Andersson says that the Claimant makes all its branded products in the UK and sells to clients throughout the UK as well as exporting products to other countries. I have seen a selection of invoices from each year from 2020 to 2024 supporting this evidence.

Mr Andersson says that all of these products are “apparatus/instruments used in signal-mixing, sound recording and sound reproducing for use in radio and television production and broadcasting”. He points to the mixing desks (Alice 828 Mk3 and Alice 28 Series) as an example of audio apparatus. As products which he says are “of particular application in film and television production” he points to the Mic Amp PAK Duo with TX & USB, Mic Amp PAK Solo with TX and USB, the Timecode DA and Dual Twin peak programme meters (PPMs) with Sifam 74A and 74B meters.

The Mic Amps are as described. On its website the Claimant describes them as “ideal for remote presenters and contributors to radio and TV shows using an existing microphone and the USB output into a PC or laptop”.

PPMs are used for live-on air audio monitoring and also have post-production use.

The Timecode DA forces the same time code signal to be sent to all audio and visual recording equipment used at the location so that they are all synchronised together, and consequently sound and image is also synchronised together. The Claimant’s website describes its uses as including “On-location shooting with PSC cameras and portable audio mixers that require a jammed LTC timecode signal, outside broadcast trucks or fixed installations that require timecode to be sent to vision mixers, EVS, audio mixing desks and studio clocks etc”. Mr Andersson confirmed in cross-examination that the time code signal was added to, or embedded within, an input audio signal.

Mr Andersson was challenged in cross-examination about whether any of these products could properly be considered ‘audiovisual equipment’ as opposed to audio equipment. He said that the Timecode DA was designed for use in radio and television (including outside broadcast environments and theatre environments) with portable single cameras and for field equipment jamming. He describes it as “important AV integration equipment which ensures that audio sound desks and cameras work together smoothly using the same time signal, to avoid lip sync issues, for example, and to assist with the editing process…”. I accept that the Timecode DA is commonly and very frequently used in audiovisual environments, although it can also be used in audio-only environments, particularly those with long runs of cable.

In his witness statement Mr Andersson also points to the Mic Amp PAK Duo with TX & USB product as being one which allows two audio signals to be input, mixed within the device, and the resulting audio provided via two audio outputs in the form of standard audio sockets but also via a USB output which is intended to allow the mixed audio to be provided directly to a computing device. He says, “The intention of this product is to allow content-creators – particularly those making digital video content for online applications – working on a laptop who wish to introduce a high-quality audio feed into their computing device to mix it with the video feed available to the computing device”. He was asked in cross-examination if the specification of this product had been developed specifically for content creators, or if he had just said so to support this case. Mr Andersson said that it had been developed for several different uses and one was for content creation. I accept his evidence.

Mr Andersson has also exhibited product reviews in independent specialist publications. For example, he has provided an extensive 5-page article from the December 2021 issue of Sound-on-Sound magazine, which he describes in his witness statement as the world’s most recognised audio equipment review magazine (description not challenged in cross-examination). In this the author notes that Mr Fletcher has “Reunited with the much-loved Alice brand after many years” and asks if he has “managed to breathe new life into this classic compact mixer”, being the Alice 828 Mk 3 analogue mixer. Another article from the same magazine in November 2023 reviewed the Claimant’s stereo optical compressor, the Alice 538R. In both articles the author provides a close analysis of what it sees as the strengths and weaknesses of the relevant product. Mr Wood in closing for the Defendants noted that there was no evidence about whether this was paid-for promotion or not, but he did not question Mr Andersson on the point in cross-examination, so it goes nowhere, in my judgment.

Mr Andersson notes that the very long history of the Alice brand in the field means that there are a large number of legacy Alice products in use by radio and TV broadcasters, sound and video recording companies, as well as products bearing the Alice Mark produced by the Claimant. The legacy Alice products in particular require repair, maintenance and refurbishment now, and he describes that as an important part of the Claimant’s business. He says that it also repairs and refurbishes third party products sent to the Claimant, and performs repair, refurbishment, maintenance and installation work, and broadcasting assistance onsite or in the field for clients. His evidence is that the Claimant provides all such services under the Alice Mark.

On this latter point, I have seen from documents in the trial bundle that the Alice Mark appears on invoices from the Claimant for such services. In cross-examination it became apparent that the Claimant does not have a team of service professionals, and those services are all provided by Mr Andersson. Mr Andersson further clarified in cross-examination that various 2023 invoices to Coyle Limited in the trial bundle relate to the provision of services in his secondary area of expertise, namely railway signalling, i.e. not audiovisual broadcasting or transmission, and so are certainly outwith the Class 37 specification for the Alice Mark.

Mr Andersson has exhibited client invoices showing, inter alia, sales of products to clients in the UK (including third party distributors) for each year from 2020 to 2024 inclusive, and repair, refurbishment, maintenance and installation work for clients from 2021 to 2024 inclusive.

Mr Andersson’s evidence is that from 1 December 2019 to the end of November 2023 its total sales turnover from the sales of products and services has been approximately £400,000 in total, showing steady growth each year from an annual sales turnover of just under £25,000 for the year ending 30 November 2020 to some £137,000 for the year ending 30 November 2023. From this, as Mr Wood for the Defendants submits and I accept, we must strip out the railway signalling services work, which amounts to approximately £97,000 of the 2023 turnover, bringing the total turnover for the whole period closer to £300,000. Mr Wood also submits that the Court should strip out the third party products for the purposes of considering use of the Alice Mark. However, I have accepted Mr Andersson’s evidence that those products were only sold with the Claimant’s Alice-branded products or services and so I decline to do so.

Mr Andersson exhibits documentation from the Defendants’ website which he says causes him to be concerned that customers of the Defendants’ camera would be confused that it was one of the Claimant’s products, or is being made under licence by the Claimant. These include an article dated 17 May 2022 advertising how the Defendants’ camera could be used by professionals to capture photos and videos and live streams of live music and live music events; and an article dated 30 May 2022 advertising how the camera could be used by professionals at live sports events to capture photos and videos and live streams, noting that the “Alice Camera works with external microphones, tripods, battery packs and storage systems”. Mr Andersson’s evidence is that the Claimant’s products are also used at live music events and live sports events to capture audio and visual content. He also exhibits screenshots from a video on the Defendants’ YouTube channel entitled “Who is the Alice Camera for?” which shows the Alice Camera in use with, and plugged into, two audio mixers, and which appears to market the Alice Camera with an audio mixer for the purpose of recording audio and visual footage together for a podcast. Of course, the Claimant sells a range of audio mixers under the Alice Mark.

Mr Andersson exhibits an Instagram post of the Defendants of 14 June 2022 which pictures the Alice Camera with a microphone set up attached, and the tag line “Read how the Alice Camera can be your best home-studio-friendly device”, and notes that the Claimant’s products connect to microphones and cameras and are used in home studios as well as professional studios.

He also exhibits a review of the Alice Camera on the website www.digitalcatapult.org.uk which quotes the third Defendant, Vishal Kumar, as saying “The Alice Camera could be really help [sic] for broadcasters, like the BBC or ITV who are massively cut for budgets but don’t necessarily need to take a massive film crew to a remote news location. Instead, they could just take something like an Alice Camera, which will give them the quality that they want, but also the ability to stream content online”. Mr Andersson notes that many of the Claimant’s customers are British broadcasting companies, and many of its products are used in the field as well as in fixed studios. For example, he says that Alice products are used in the filming of Love Island, and also at the Wimbledon tennis championships. He says he is concerned that the Defendants are targeting customers operating in this same space using the identical Alice Sign.

Mr Anderson says that it is common for companies which manufacture and sell cameras also to sell audio and broadcasting equipment, such as well-known professional and consumer goods companies such as Sony, JVC, Panasonic and Canon as well as more specialist companies such as Blackmagic, Datavideo, Arri and Grass Valley, and so he is concerned that those who see or buy the Alice Camera may believe it is a product of the Claimant, or may believe that produced by the Defendants under licence from the Claimant. He has provided evidence of the product range of these companies which shows, for example, that Blackmagic manufactures a range of digital video/film cameras including handheld cameras as well as audio mixing desks, audio monitors and embedded audio/visual switches; Sony manufactures cameras and video cameras across the consumer and professional market, as well as audio and audiovisual equipment for broadcast and production, including audio amplifiers and mixers; and Datavideo which makes video cameras as well as audio mixing equipment. Mr Andersson was questioned about this in cross-examination which only strengthened his evidence in my judgment, for example noting that Datavideo’s equipment is used on large and small television shows and includes a range which relies on an external timecode system. I am satisfied on his evidence that it is common in the industry that companies marketing products similar to the Claimant’s products also market cameras, and I accept that he considers it a real risk that the First Defendant’s camera, if marketed under the Alice Sign or Alice Camera Sign, would be perceived by the public as a natural product line extension of the Claimant’s offering.

The Defendants did not file any evidence in chief. However, the Third Defendant, Mr Vishaal Kumar filed a witness statement dated 19 August 2024 in reply to that of Mr Andersson, and on behalf of all of the Defendants. HHJ Hacon permitted the Defendants to rely on this witness statement by order of 30 July 2024. Mr Kumar attended court remotely and was cross-examined.

Mr Kumar’s written evidence is that he believes the Claimant’s business is focussed on professionals in the audio/TV industry. He says that in contrast the Alice Camera is aimed at general consumers, including hobbyists and travellers who might want a higher quality of video production, and also video enthusiasts who might want to produce videos for uploading to a user generated content website such as YouTube, or another online platform for videos. He described the Alice Camera as apparatus which attaches to a mobile phone and provides the quality of a Digital SLR or mirrorless camera. It retails at around £750, which he says is around the cost price of mid-level cameras for content creators. He has exhibited some evidence of pricing from a camera magazine which appears to support this assessment. He said that the Alice Camera has obvious benefits over a separate camera from the point of view of the casual user or content creator as it uses less space and is easier to work with the content in terms of uploading media quickly and easily and being able to save videos to their phone.

Mr Kumar accepted that, as was Mr Andersson’s evidence, the Alice Camera could be used by consumers to capture video at music and sporting events, but said that he considered that was still quite different to the professional products aimed at the industry sold by the Claimant. He said the video content produced by the Alice Camera “is not comparable to professional TV or film companies”. He accepts that the Alice Camera could be used by more specialist users, which he described as “very much aspirational – it would be wonderful if the market for cameras changes to mean that cameras of the quality of ours becomes “enough” for the television industry”, he says the “main use case” for the Alice Camera is “content creators who want a higher quality of output that they can get from their phone but want to be able to upload media quickly and easily... Ease of use and assistance are key”. He accepted that the Alice Camera could be used with an external audio source such as a microphone.

I was not convinced by his evidence that the Defendants did not intend to market the Alice Camera to professionals and considered that it was quite different to professional products, as it runs counter to much of the messaging that the First Defendant has put out to the public, although he sought to dismiss this in cross-examination. When he was asked about the quote on www.digitalcatapult.org.uk where he said that the Alice Camera could be really helpful for broadcasters, and referred to use by professionals in the film or creative industries, he first said “My understanding is that professionals want complete control and the Alice camera won’t give that”, and then accepted that it was possible that professionals could use it if they considered it was useful. But he described it as “just aspirational marketing speak, polished for social media”. When asked about his quote that the Alice Camera would allow the shooting of “really high-quality professional footage” and that it would be “really helpful for broadcasters like the BBC or ITV” he described this as “ahypothesis in 2021, but we realised that BBC and ITV want something very different to the Alice Camera”. Mr Kumar sought to give opinion evidence on what professional audiovisual industry users want, but he is not an expert in this case and nor do I understand him ever to have been such a professional, and as such does not have the expertise or qualifications to give that opinion, which is inadmissible in my judgment. When asked about a skills video shot at Boxpark Shoreditch in which he said that “we even had someone who works at Netflix” interested in the Alice Camera, he accepted that Netflix were one of the biggest producers of content in the world, and this was important to tell to the world, but said he failed to mention it in his witness statement “because it was dated”. I consider that he failed to mention it because it did not fit his narrative that the Alice Camera was only really suitable for consumers and casual users “such as entry level content creators who want a professional look and polished social media content”, although he did accept that such users could include those who work in the film and creative industries or who aspired to work in the creative industries. In my judgment the evidence suggests that the high quality video output of the Alice Camera, and the benefits which come from its attachment to a mobile telephone, would be of interest to professionals in the audiovisual industry both for professional use and for their own use outside their working life.

Mr Kumar accepted in cross-examination that he had sought and obtained financing for the First Defendant, eventually obtaining £1m in venture capital finance, and that in pitching the business to potential investors he had created business plans and presentations in which he would have set out, amongst other things, the target market for the Alice Camera. None of those have been disclosed. I am satisfied that I am able to draw the inference, and do draw it, that he has not disclosed such documents as they would not support his case that the Alice Camera was intended to be marketed only to consumers and casual users.

In relation to the video exhibited by Mr Andersson showing the Alice Camera being used alongside an audio mixing desk, he accepted that some content producers do use audio mixing desks, but he did not believe his target customers would use mixing desks of the sort sold by the Claimant or that they would be likely to use the Alice Camera with a mixing desk. This appears to me to be entirely speculative.

In cross-examination, and as previously noted, Mr Kumar resiled almost entirely from the pleaded intention:

It follows from his evidence, as was fairly put to him by Dr Ivison, that the Defendants’ pleaded case in the original Defence and at paragraph 14(a) of the Amended Defence and Counterclaim that the Acts complained of had ceased was not true when he signed the Defence in October 2023 or when he signed the Amended Defence and Counterclaim in June 2024. Mr Kumar accepted that that they had not ceased, and he knew that when he signed those documents with a statement of truth.

Section 46(1) TMA provides, so far as is relevant to this case, that the registration of a trade mark may be revoked on any of the following grounds:

“(a)

that within the period of five years following the date of completion of the registration procedure, it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;

(b)

that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;

…”

Section 46(5) TMA provides that where grounds for revocation exists in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only.

There is no dispute between the parties on the applicable legal principles, the dispute being on whether such evidence of use as adduced by the Claimant was sufficient to demonstrate genuine use across the specification of the classes in which it is registered, or some reduced specification in those classes.

Mr Wood stated in closing that he has no issue with Dr Ivison’s summary of the law. That includes that, relying on Minimax, Case C-40/01 that the concept of “genuine use” includes use which is small in quantitative terms, provided that use is demonstrated: (i) which is not merely token, i.e. carried out solely for the purpose of sustaining a grade mark registration (at [46]); and (ii) which is real, in the sense of being warranted in the sector concerned to “maintain or create a share in the market for the goods protected by the mark” (at [38]).

The Court of Appeal provided a helpful summary of principles applicable to determining whether there has been genuine use of a trade mark in easyGroup v Nuclei Ltd & Ors [2023] EWCA Civ 1247, [2024] FSR 9 at [106] – [107], citing the following CJEU cases: Case C-40/01 Ansul BV v Ajax Brandbeveiliging BV [2003] E.C.R. I-2439, Case C-259/02 La Mer Technology Inc v Laboratoires Goemar SA [2004] E.C.R. I-1159; [2004] F.S.R. 38, Case C-416/04 P Sunrider Corp v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2006] E.C.R. I-4237, Case C-442/07 Verein Radetzky-Order v Bundervsvereinigung Kamaradschaft 'Feldmarschall Radetzky' [2008] E.C.R. I-9223, Case C-495/07 Silberquelle GmbH v Maselli-Strickmode GmbH [2009] E.C.R. I-137, CaseC-149/11 Leno Merken BV v Hagelkruis Beheer BV [EU:C:2012:816], CaseC-609/11 Centrotherm Systemtechnik GmbH v Centrotherm Clean Solutions GmbH & Co KG [EU:C:2013:593 ], Case C-141/13 P Reber Holding & Co KG v Officefor Harmonisation in the Internal Market (Trade Marks and Designs)[EU:C:2014:2089], Case C-689/15 W.F. Gözze Frottierweberei GmbH v Verein Bremer Baumwollbörse [EU:C:2017:434] and Joined Cases C–720/18 and C–721/18 Ferrari SpA v DU [EU:C:2020:854]:

“106.

Ignoring issues which do not arise in the present case, such as use in relation to spare parts or second-hand goods and use in relation to a sub-category of goods or services, the principles may be summarised as follows:

(1)

Genuine use means actual use of the trade mark by the proprietor or by a third party with authority to use the mark: Ansul at [35] and [37].

(2)

The use must be more than merely token, that is to say, serving solely to preserve the rights conferred by the registration of the mark: Ansul at [36]; Sunrider at [70]; Verein at [13]; Centrotherm at [71]; Leno at [29]; Ferrari at [32].

(3)

The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user by enabling him to distinguish the goods or services from others which have another origin: Ansul at [36]; Sunrider at [70]; Verein at [13]; Silberquelle at [17]; Centrotherm at [71]; Leno at [29]; Gözze at [37], [40]; Ferrari at [32].

(4)

Use of the mark must relate to goods or services which are already marketed or which are about to be marketed and for which preparations to secure customers are under way, particularly in the form of advertising campaigns: Ansul at [37]. Internal use by the proprietor does not suffice: Ansul at [37]; Verein at [14]. Nor does the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter: Silberquelle at [20]–[21]. But use by a non-profit making association can constitute genuine use: Verein at [16]–[23].

(5)

The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, that is to say, use in accordance with the commercial raison d'être of the mark, which is to create or preserve an outlet for the goods or services that bear the mark: Ansul at [37]–[38]; Verein at [14]; Silberquelle at [18]; Centrotherm at [71].

(6)

All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark, including: (a) whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods and services in question; (b) the nature of the goods or services; (c) the characteristics of the market concerned; (d) the scale and frequency of use of the mark; (e) whether the mark is used for the purpose of marketing all the goods and services covered by the mark or just some of them; (f) the evidence that the proprietor is able to provide; and (g) the territorial extent of the use: Ansul at [38] and [39]; La Mer at [22]–[23]; Sunrider at [70]–[71], [76]; Centrotherm at [72]–[76]; Reber at [29], [32]–[34]; Leno at [29]–[30], [56]; Ferrari at [33].

(7)

Use of the mark need not always be quantitatively significant for it to be deemed genuine. Even minimal use may qualify as genuine use if it is deemed to be justified in the economic sector concerned for the purpose of creating or preserving market share for the relevant goods or services. For example, use of the mark by a single client which imports the relevant goods can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor. Thus there is no de minimis rule: Ansul at [39]; La Mer at [21], [24] and [25]; Sunrider at [72]; Leno at [55].

(8)

It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use: Reber at [32].

107.

The trade mark proprietor bears the burden of proving genuine use of its trade mark: see section 100 of the 1994 Act and Ferrari at [73]–[83]. The General Court of the European Union has repeatedly held that genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned: see e.g. Case T-78/19 Lidl Stiftung & Co KG v European Union Intellectual Property Office [EU:T:2020:166] at [25]. It has also repeatedly held that the smaller the commercial volume of the exploitation of the mark, the more necessary it is for the proprietor to produce additional evidence to dispel any doubts as to the genuineness of its use: see e.g. Lidl at [33]. In Awareness Ltd v Plymouth CC [2013] R.P.C. 24 Daniel Alexander QC sitting as the Appointed Person said:

"19.

For the tribunal to determine in relation to what goods or services there. has been genuine use of the mark during the relevant period, it should be provided with clear, precise, detailed and well-supported evidence as to the nature of that use during the period in question from a person properly qualified to know. …

22.

… it is not strictly necessary to exhibit any particular kind of documentation but if it is likely that such material would exist and little or none is provided, a tribunal will be justified in rejecting the evidence as insufficiently solid. That is all the more so since the nature and extent of use is likely to be particularly well known to the proprietor itself. A tribunal is entitled to be sceptical of a case of use if, notwithstanding the ease with which it could have been convincingly demonstrated, the material actually provided is inconclusive. By the time the tribunal … comes to take its final decision, the evidence must be sufficiently solid and specific to enable the evaluation of the scope of protection to which the proprietor is legitimately entitled to be properly and fairly undertaking, having regard to the interests of the proprietor, the opponent and, it should be said, the public."”