On the record
The case confirms the need to run a tight ship when it comes to evidence, writes Robert Milligan
The UK IPO has rejected an opposition by Harrogate Distillery Ltd, trading as Whittaker’s Gin (the
Opponent), against the Little Hare Gin Company Ltd’s (the Applicant) UK trade mark application for a series of six figurative marks for LITTLE HARE GIN for “gin” goods in class 33 on the basis of a lack of relevant evidence to establish its claims.
The Opponent invoked sections 5(3) and 5(4)(a) of the Trade Marks Act 1994 (the Act), relying on a UK trade mark registration (the Hare Mark) covering “gin” in class 33, and unregistered rights in the Hare Mark throughout the UK since 15th July 2015 in relation to “gin”.
The Opponent had to prove a reputation and goodwill in the Hare Mark prior to 11th March 2020 (the Relevant Date).
Reputation and goodwill
The Opponent’s evidence took the form of two witness statements in the name of a director of Tameseal Ltd,
the company that had created the Hare Mark.
It was not clear why this director was filing evidence instead of the Opponent itself. However, the Hearing Officer (HO) still took this evidence into consideration.
The witness statements were accompanied by 20 exhibits summarised as: a screenshot showing the use of the Hare Mark on a bottle of gin on Fortnum & Mason’s website; screenshots of other gin goods produced by the Opponent that did not contain the Hare Mark; industry awards won by the Opponent for its gin products; the Opponent’s directors’ memberships of the Gin Guild in 2016 and the Worshipful Company of Distillers in 2020; a photograph of an open box containing two bottles of gin bearing the Hare Mark; and three photographs of the Opponent’s distillery.
Although the evidence showed use of the Hare Mark on a bottle of gin listed for sale via Fortnum & Mason’s retail website, such evidence was after the Relevant Date.
Without evidence of sales, advertising spend or turnover figures for gin sold under the Hare Mark in the UK, the HO was unable to infer from the evidence that the Opponent had sold any bottles of gin bearing the Hare Mark prior to the Relevant Date.
The evidence filed by the Opponent of industry awards did not assist in proving reputation, as no evidence or explanation was provided as to the reach of the awards in the UK, their relevance to the UK public or whether they were decided upon by a panel of judges or members of the public.
The memberships of the Gin Guild and the Worshipful Company of Distillers had to be discounted, as well as the evidence showing use of the mark on other products and at the distillery, as these usages were not evidence of use of the Hare Mark on gin products per se.
While the HO accepted that the distillery was likely to produce gin products, they could not infer a reputation without evidence of how much gin was produced, how much was sold in the UK and how many UK consumers were likely to see the Hare Mark on the Opponent’s gin products.
As a result, the HO found that the Opponent had failed to prove a reputation in the Hare Mark prior to the Relevant Date, and the claim under s5(3) of the Act failed.
The evidence filed to support the Opponent’s s5(4)(a) claim was the same as that filed in support of s5(3).
Unsurprisingly, based on the evidential deficiencies set out above, the HO found that the Opponent had not established goodwill in the Hare Mark to maintain a claim of passing off.
As a result, the claim under section 5(4)(a) failed and the opposition was rejected.
Evidential formalities
As an aside, the HO went on to note that the Opponent had filed a number of submissions wherein it sought to explain and expand on the evidence filed.
It also sought to introduce additional statements of fact, such as use of the Hare Mark on gin products displayed in the TV shows The Apprentice and The Yorkshire Vet.
The Opponent also claimed to operate tours of its distillery for members of the public. However, neither statement was supported by the evidence, and as the submissions did not contain a statement of truth they could not be admitted into evidence.
Had the Opponent addressed these additional statements in its witness statements or an additional witness statement, then the HO would have been able to consider these points in the overall assessment of reputation and goodwill.
This case illustrates the importance of brand owners maintaining good records of the use of their marks so that when they do wish to enforce their rights, evidence can be readily collated.
It also serves as a timely reminder that evidence of a reputation and/or goodwill needs to show use of the mark relied on in relation to the goods and/or services claimed, alongside evidence of sales, market reach and advertising spend.
The evidence also needs to be prior to the relevant date.
Finally, practitioners need to be careful in keeping submissions and statements of fact separate and should ensure that witnesses explain the relevance of why they are filing evidence in proceedings.
At the time of writing, the decision had not been appealed.
Key points
- Maintain good records of the use of marks so that evidence can be readily collated as needed
- Evidence of a reputation and/or goodwill must show use of the mark relied on in relation to the goods and/or services claimed, and must be prior to the relevant date
- Keep submissions and statements of fact separate and ensure that it is clear why witnesses are filing evidence.