Abanka DD v Abanca Corporacion Bancaria SA

Genuine use of a trade mark in the United Kingdom requires commercial activity by, or authorised on behalf of, the proprietor which is directed towards creating or maintaining a market in the United Kingdom. Mere visibility of the mark resulting from customers using foreign banking services, cards, cheques, guarantees or online facilities in the United Kingdom is insufficient. Website accessibility and use from the United Kingdom are not decisive; targeting is a multifactorial question. Securities marketed and sold through the London market may constitute genuine use in the United Kingdom, even though their issue raises funds for the proprietor. An appellate court should show restraint when reviewing a registrar’s multifactorial assessment, but should intervene where a distinct error of principle is shown.

Abanka appealed against the Registrar’s decision revoking two international registrations for the mark ABANKA for non-use and dismissing Abanka’s opposition to Abanca’s application for the stylised mark ABANCA. The registrations covered financial and related services. Abanka relied on guarantees, cheques, website use, payment cards, a banking award and Eurobonds listed on the London Stock Exchange. The central issues were whether those activities constituted genuine use of the marks in the United Kingdom and, if so, what specification should remain and what consequences followed for the opposition.

1. Appeal allowed in part. The hearing officer was entitled to reject the alleged use relating to payment guarantees, cheques, website activity, most card activity, the press release and the London Stock Exchange listing evidence apart from the Eurobonds.
2. Use of a guarantee or cheque provided to a customer in Slovenia remained use of the mark in relation to a service supplied in Slovenia. The customer’s transmission of the instrument to a United Kingdom undertaking did not mean that Abanka had used the mark in the United Kingdom. The same principle applied to customers using foreign-issued cards in the United Kingdom.
3. Access to a website from the United Kingdom, including access by United Kingdom users and the availability of English-language content, did not itself establish use in the United Kingdom. Targeting required a multifactorial assessment. The absence of United Kingdom regulatory authorisation was a relevant, although not conclusive, factor.
4. The appellate court should approach a registrar’s multifactorial evaluation with caution. It should not interfere merely because it might have reached a different conclusion. It should intervene where the decision was wrong in principle or outside the range of reasonable conclusions.
5. Use of ABANKA on Euro-denominated bonds marketed and sold through the London Stock Exchange was genuine use in the United Kingdom. The bonds were objects of commerce, the issuer’s identity and creditworthiness were material to purchasers, the Information Memorandum constituted genuine promotion, and sales of more than £1 million to United Kingdom institutions were not merely token.
6. The matter was to proceed on the basis that use had been proved for Euro-denominated bonds of at least €50,000 issued through the London Stock Exchange. The appellant was directed to provide a draft specification and supporting reasons, with consequential submissions on the opposition and any remission to the Registrar.

• High Court (Chancery Division): appeal from the Registrar of Trade Marks allowed to the limited extent that genuine use was established for Euro-denominated bonds marketed and sold through the London Stock Exchange; otherwise dismissed. Consequential specification and opposition issues were left for further submissions.