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Retail team member Sarah Neil follows up on her last article to assess how the Appointed Person considered the issue of the ‘senior user’ on appeal.
We previously reported the first instance decision in an opposition between ABP Technology Limited (“ABP”) and Voyetra Turtle Beach, Inc (“VTB”) relating to the marks STEALTH and STEALTH VR. The proceedings before the Hearing Officer were decided in ABP’s favour with VTB’s application being refused entirely and ABP’s registration surviving the invalidity attack. The decision was based on a finding that ABP was the senior user of the mark.
VTB has since filed an appeal to the Appointed Person claiming two errors made by the Hearing Officer:
The Hearing Officer erred in his approach to section 5(4)(1) of the Act. In particular by substituting the correct test under section 5(4)(a) with a question of ‘who is the senior user’.
The Hearing Officer erred in the assessment of evidence by treating evidence as ‘uncontested’ when in fact it was contested.
Both grounds of appeal were dismissed fairly easily by the Appointed Person. It is the first of these alleged errors which produces the core of the decision and the most interesting points to come out of this case.
The Appointed Person started by confirming that Hearing Officer had correctly set out the test under section 5(4)(a), but had also correctly identified that as both parties had used the mark prior to the date ABP’s registration was filed, an earlier date, namely the date of first actionable use, was relevant to assessment of the passing off claim. The Appointed Person then went on to review this earlier date in some detail.
The Appointed Person confirmed that it was correct for the Hearing Officer to first decide when ABP’s actionable use began, noting that this is not dependent upon the generation of goodwill, and then to assess whether VTB had goodwill as of that date.
In the appeal decision, it is made clear that the question of whether ABP did or did not have any goodwill in the mark as of the date of first actionable use is irrelevant to the assessment of a passing off claim. Rather, the assessment of the passing off claim “must be made by reference to the normal and fair use of ABP’s mark”. On the facts, ABP’s first actionable use of the mark pre-dated the earliest date by which VTB could have generated any goodwill and the Hearing Officer’s finding that ABP was the senior user of the mark was upheld. Whether or not ABP had generated goodwill at the time of its first actionable use was not relevant to determine which party is the senior user.
Where use of a mark has been made prior to a trade mark application being filed, the relevant date of assessment of a passing off claim can be brought forward from the date the application was filed, to the date of first actionable use of the mark.
The party asserting passing off rights must show they had goodwill in their mark as of the date of first actionable use of the mark by the other party
To defeat a passing off claim, the Applicant’s use of the mark must pre-date the generation of goodwill by the party asserting passing off. Whether or not the Applicant itself had goodwill at the date of first use is irrelevant.
AA Thornton acted on behalf of ABP in these proceedings.
If you’d like to discuss this topic, or perhaps another trade mark query, you can contact the writer, or a member of the trade mark team.
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