The book “1984” by George Orwell is widely considered to be one of the greatest and most thought-provoking books ever written.

In the modern day we are already experiencing some of the societal aspects that Orwell had predicted way back in 1949 when he penned the book, such as mass surveillance.

Fast forward to February 2024 and a trade mark dispute concerning the right to register “1984” was decided, with an award being made in favour of the Orwell Estate.

The consolidated case involved an opposition that was mainly unsuccessful, in part due to the opposition being based on insufficient grounds. A retaliatory revocation action directed at the opponent’s mark was successful as a result of deficiencies in the evidence filed by the proprietor, despite use of the mark in the form of £44,683 turnover figures shown as evidence for the relevant period.

This case serves as a reminder that if you base an opposition on a mark that has been registered for more than 5 years, you should ensure that you can provide convincing evidence of use, or you run the risk of it being cancelled in a retaliatory revocation action.

Background

In 2022, Miss Joan Mary Taylor (Miss Taylor) filed an opposition against an application by The Estate of the Late Sonia Brownell Orwell (the Estate) to register the mark 1984 under No. 3749701, which claimed priority back to 6th March 2018.

The opposition was based solely upon Section 5(1) of the UK Trade Marks Act 1994 (“the Act”).

Shortly before the opposition was filed, the Estate had filed a non-use revocation action under Section 46(1)(a) of the Act against Miss Taylor’s UK Trade Mark Registration No. 3102740 which covered Class 25 goods.

The Non-Use Revocation Action

The Estate claimed that the registration had not been put to use in the UK by the proprietor or with their consent during the five-year period 25th July 2015 to 24th July 2020 and a revocation date of 25th July 2020 was claimed by the Estate.

Both Miss Taylor and the Estate defended the actions which led to the consolidation of the parallel opposition and cancellation proceedings.

Despite the revocation action focusing on the five year period 25th July 2015 to 24th July 2020 and with a claimed effective date of revocation 25th July 2020, this would have had no impact upon the success of the opposition because the claimed revocation date (25th July 2020) fell after the deemed filing date of the opposed application, this being 6th March 2018 which was recorded as its priority date.

In order to try and prove use of her earlier registration for “1984”, Miss Taylor filed evidence in the form of various documents such as data sheets, sales figures, customer receipts, orders for t-shirts to be printed (and corresponding invoices), orders for swing tags and an example of a swing tag, and two screenshots from “Instagram”.

In the scope of her Witness Statement, Miss Taylor sought to make it clear that she did not sell any “1984” branded products on-line and that all of her product sales were generated through her boutique store in Nottingham.

The evidence of use relied upon my Miss Taylor included evidence of use of the following variations of the “1984” mark:

1984

The Hearing Officer therefore had to decide whether use of each of the variations set out above constituted acceptable “variant use” of the registered mark, namely:

The conclusion was that variations 1, 2 and 3 constituted acceptable use, whereas the use of 1984 on the t-shirt was likely to be seen as being merely a decorative element on the front of the t-shirt rather than as badge of origin and so was therefore not considered to be acceptable use of Miss Taylor’s earlier mark.

In her review of the evidence, the Hearing Officer commented that a turnover figure of £44,683 for the years 2016 – 2019 was low, particularly as the products generating the sales were clothing goods.

She referred to the evidence filed by Miss Taylor as “minimal” and noted that the evidence did not provide any details regarding how many units of goods (broken down into product type) had been sold, nor did it contain a pricing list for the goods (evidence that Miss Taylor could have been reasonably expected to have provided).

Additionally, no supporting evidence in the form of advertising figures were provided. The only evidence of Miss Taylor’s advertising consisted of two “Instagram” posts. However, these posts showed use of the t-shirt as variant 4 set out above. Since the t-shirt was not considered to be an acceptable variant of the mark as registered then the evidence in this instance was not considered.

Accordingly, when taking the evidence as a whole into account, the Hearing Officer held that the evidence put forward by Miss Taylor had failed to show real commercial exploitation of the mark in order to create or maintain a share of the UK market in respect of clothing goods.

Given the relatively low volume of sales, Miss Taylor would have had to provide significant supporting evidence to demonstrate genuine use. Had she been able to provide invoices, price lists, and more substantial marketing materials, the sales of £44,683 might have been considered sufficient to constitute genuine use of the mark.

The revocation action was therefore successful, but only from the claimed revocation date of 25th July 2020.

However, as the opposed application was filed on 6 March 2018, the effective revocation of the mark from 25 July 2020 had no effect on the position because – at that date – the application retained its earlier right status. The opposition could therefore continue on the basis of Miss Taylor’s earlier mark.

The Opposition

The Opposition was based on Section 5(1), which states that “a trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected”. The marks at issue for the opposition were as follows:

Earlier mark:

Opposed application:

1984

In order for two marks to be considered identical, case law tells us that they must “reproduce, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by the average consumer”.

In this instance, the earlier mark consisted of the number “1984” in white font contained within a black square. The opposed mark consisted of the number 1984 in plain black letters.

The Hearing Officer decided that these marks were strictly “identical”, reasoning that if the opposed mark was placed on a black background, the only way it could be read was if the colour of the font was changed to a different colour, such as white, and that use of “1984” in white would be fair use of the plain word mark “1984”.

The Hearing Officer did not comment upon the fact that the earlier mark consisted of the number “1984” contained within a black square, in contrast to the opposed mark, which is not contained within any geometric shape. Although it would make no difference to the outcome, it is nevertheless quite controversial.

The other requirement for success in opposition under Section 5(1) is that the respective goods must be identical.

By basing the opposition solely on Section 5(1), Miss Taylor inadvertently hampered her own chances because the opposed application covered a wide range of goods and services such as “walking sticks; decorative plates; decoration for Christmas trees; lobbying services”.

No amount of creative arguing was going to convince the Hearing Officer that the majority of the opposed goods and services were identical to the single term “clothing”, as covered by Miss Taylor’s earlier right.

Consequently, only the applicant’s goods “Clothing; underwear, outerwear, suits; coats, gloves, shirts, t-shirts, jumpers, tops, pyjamas, gowns, beachwear, socks, scarves” were considered “identical” to the opponent’s goods “clothing”.  All other goods and services were allowed to remain.

Comment

It is not surprising that that the opposition based on Section 5(1) was only successful in relation to a tiny portion of the goods and services covered by the contested application. It seems likely that the outcome would have been different had Miss Taylor relied upon Section 5(2), instead of, or in addition to, the sole basis under Section 5(1).

This case illustrates the dangers of not fully considering the basis for opposition and, perhaps, by not seeking professional advice from a trade mark attorney at the outset.

Had the Miss Taylor relied upon Section 5(2) as well as Section 5(1), she would likely have achieved a greater degree of success in the opposition.

If you believe another party is seeking to register your mark, or a very similar mark, then action can be taken if necessary. Get in touch with us now for a FREE consultation and let us help you.