H Young (Operations) Ltd. v Medici Ltd.

For partial revocation of a trade mark for non-use, the specification should be reduced to a fair description of the goods for which genuine use has been proved. The description is assessed from the perspective of the average consumer in the context of trade mark protection. It need not reproduce the proprietor’s precise product range, marketing image or intended customer group. Relevant considerations include the nature and breadth of the goods and whether they are sold through ordinary retail channels. Where use covers a recognisable core of ordinary clothing, “clothing” may remain appropriate. Once the specification is settled, infringement under section 10(2) turns on the likelihood of confusion.

The claimant owned the registered mark “Animal”, covering goods in several classes, including clothing, footwear, headgear and T-shirts. The defendant used “Animale” for ladies’ fashion clothing. The defendant counterclaimed for partial revocation of the registration for non-use, arguing that the specification should be confined to particular garments, a surf-related image and younger purchasers.

The court first considered the scope of the registration because the infringement claim depended on the specification of goods. It also considered the defendant’s challenges to other classes. The central issues were the proper description of goods for which genuine use had been shown and whether “Animale” was confusingly similar to “Animal” for the resulting specification.

1. Partial revocation—general approach. The court adopted the approach in Thomson Holidays v Norwegian Cruise Line Ltd [2003] IP&T 299 and West (TA Eastenders) v Fuller & Turner [2003] EWCA Civ 48. The correct question is the fair description which the average consumer would use for the products in which the mark has been used.
2. The description should not be artificially narrow. Relevant considerations include whether the goods are specialist or everyday goods, whether use concerns one item or a range, and whether the goods are sold in ordinary retail channels. The product’s image and the intended age of purchasers do not justify a narrower description where consumers would not make those distinctions for trade mark purposes.
3. For Class 25, use across a range of garments justified retaining “clothing” without a surf-type or age qualification. “Footwear” was limited to “casual footwear”, while “headgear” was limited to the kinds of hats for which use had been proved.
4. For the other classes, the specifications were narrowed to the fair descriptions supported by the evidence, including motorcycle helmets, horological instruments, cardboard point-of-sale materials, brochure dispensers, shop display units and shop display shelves. Goods unsupported by genuine use, including books, boxes and packaging containers, were removed.
5. With “clothing” retained, “Animale” was confusingly similar to “Animal”. The trade mark infringement claim therefore succeeded. The counterclaim succeeded only to the limited extent identified in the judgment. Counsel were to be heard on the consequential order.