October 27, 2020
The UK Intellectual Property Office gives guidance on references to Without Prejudice correspondence in Tribunal hearings, early abandonment of goods and services in revocation proceedings, and the difference between provision of a service for use by third parties and use of that service.
- emphasised the need for caution when disclosing Without Prejudice correspondence to a Tribunal;
- stressed that a Proprietor should formally abandon goods and services of a Contested Registration when it provides no evidence of use, or face a costs penalty;
- distinguished between using a service (e.g. to send emails, or to man a chat room), which is not trade mark use in relation to that service, and providing that service (email or chat room) to third parties, which is.
O2 (the Proprietor) owned a registration for GURU/guru (series of two) (the Contested Registration). Joshi Worldwide IP Limited (the Applicant) applied for revocation of the registration in full on the grounds of non-use. The Proprietor contested the application and produced evidence of use covering some, but not all, of the services for which the Contested Registration was registered.
At the hearing, but before the decision, the parties made submissions on the question of costs, in the course of which the Proprietor referred to correspondence which at that time both parties agreed was “without prejudice save as to costs”. After the hearing, the Applicant suggested that the correspondence was “without prejudice” and should not have been disclosed to the Tribunal.
The registration was revoked in large part for non-use.
Disclosure of without prejudice material at a hearing
Refusing to recuse himself, the Hearing Officer detailed the correct approach with regard to without prejudice materials, which should have been followed. The Tribunal’s attention should have been drawn to the fact that the Applicant wished to make costs submissions based upon “without prejudice save as to costs” material and the Applicant should have requested the opportunity to make written submissions after the substantive decision had been issued.
The Proprietor filed a Counterstatement defending its registration in full. It filed evidence to show use for various services covered by its specification but did not refer to whole parts of its specification at all. There was no clear indication by the Proprietor that it was formally abandoning the Contested Registration in respect of the omitted services until the day of the hearing. Due to this, the Applicant’s costs for preparation for the hearing had been increased, as the Applicant had had to prepare submissions in relation to the full breadth of the Proprietor’s specification.
The Tribunal stressed that parties have an obligation to conduct proceedings efficiently and proportionately, and where a decision has been taken not to defend a mark in relation to part of its specification, that should be made clear at the earliest possible opportunity. He made an award of costs at the top end of the scale in respect of preparation for the hearing.
Shortcomings in evidence of the Proprietor
The Tribunal discounted a number of services in Classes 35, 36, 37, 38, 41, 42 in the Proprietor’s specification, based on lack of evidence of use of the mark in relation to those services. In particular:
Charitable fundraising in Class 36
The Proprietor gave as evidence for “charitable fundraising” the fact that O2 had partnered with the NSPCC – The National Society for the Prevention of Cruelty to Children to try to provide advice about children’s safety online. However, the Tribunal noted that the fact that the Proprietor had engaged in promotional activities in association with a charity (in this case, the NSPCC) did not amount to the Proprietor actually providing charitable fund-raising services under the Contested Registration. The purpose of the Proprietor’s involvement in this collaboration was to direct customers to its services, rather than itself to engage in fund-raising.
Providing internet chatrooms in Class 38
The Tribunal accepted that the Proprietor offered the ability to converse with its employees under the Contested Registration via an online chat service. However, that was not the same as providing internet chatrooms. By way of analogy, the fact that a business offers an email address through which customers can contact it for advisory services does not mean that that business is providing email services. Rather, the chat function offered by the Proprietor could be seen as an alternative means of providing information to customers rather than using more common methods such as telephone or email. The provision of internet chatrooms would involve the commercial provision of a platform to enable other people to use the chatroom with third parties, which are usually offered by specialist providers. There was no evidence that the Proprietor was attempting to create or maintain a share in the market for these services.