Pathway IP SARL v Easygroup Ltd

On an appeal from a trade mark revocation decision, a specification must ordinarily be construed according to the natural and ordinary meaning of its words, confined to their core meaning where necessary to preserve clarity and precision. A Nice Classification class number may assist interpretation where the specification lacks clarity and precision, including in revocation proceedings, but need not be used where the wording is sufficiently clear.

Genuine use requires real commercial exploitation of the mark in relation to the registered goods or services. Use of facilities merely as an adjunct to a principal service, without evidence that it created or maintained a market for the registered services, is insufficient. The proprietor bears the burden of proving use.

The appellant, formerly Regus No. 2 SARL, appealed against a UKIPO decision revoking two easyoffice registrations under section 46 of the Trade Marks Act 1994 for non-use. The registrations covered “provision of office facilities, rental of office equipment”.

The hearing officer construed the specifications by reference to their ordinary meaning and the Nice Classification, and found that the evidence did not establish genuine use for the registered services during the relevant periods. The appeal raised issues concerning fresh evidence, construction of specifications, the relevance of class numbers, and the sufficiency of evidence of genuine use.

1. The appeal was dismissed. The application to adduce fresh evidence was refused. Although the evidence had not been reasonably expected to be relevant before the hearing, the appellant had ample time before the Decision was delivered to draw the prosecution history to the hearing officer’s attention. The evidence was also irrelevant and inadmissible. The general rule is that prosecution history does not determine the scope of a registered trade mark, subject to limited exceptions such as an agreed limitation.

2. An appeal from the Registrar under the Trade Marks Act 1994 is a review, not a rehearing. The appellate court should interfere for an error of principle or where the decision is clearly wrong, but should not interfere merely because the decision could have been better expressed.

3. The Court expressed the provisional view that a Nice Classification class number may be used as an aid to interpretation where the words in a specification lack clarity and precision. That principle applies to granted registrations as well as applications. It does not require reference to the class number where the wording is sufficiently clear and precise.

4. The phrase “provision of office facilities” was clear and precise. Its ordinary meaning covered facilities for use in an office, including physical items and office-related human endeavours, but not rental of the office itself. “Rental of office equipment” covered equipment used in an office. The hearing officer’s construction was therefore correct, even if his additional reliance on the class number was assumed to be erroneous.

5. Genuine use requires real commercial exploitation of the mark in the relevant market. Relevant circumstances include the nature of the services, the characteristics of the market, the scale, scope and frequency of use, the territorial extent of use, and whether use was warranted to create or maintain a market. Facilities supplied merely as an adjunct to rented office space did not establish genuine use for those facilities.

6. The occupation agreements did not quantify use of office facilities or equipment, and the 1999 leaflet did not prove use during the relevant periods. The proposed turnover calculations were an unreliable reconstruction. The appellant therefore failed to discharge the burden of proving genuine use.

• High Court (Chancery Division): appeal from the UKIPO decision dated 6 June 2011 dismissed.