Non-Use Sinks 'Titanic Quarter' and 'Giordano' Trade Marks
Irish intellectual property office revokes trade mark registrations due to non-use in Ireland. An online presence found not to target Irish customers specifically is not sufficient to maintain a registration
In two recent decisions, the Irish intellectual property office found that the trade marks TITANIC QUARTER and GIORDANO had not been put to genuine use in Ireland by their proprietors. Accordingly, the registrations for both marks were revoked.
TITANIC QUARTER was registered as a trade mark in Ireland in 1999 by the group of companies behind the Titanic Quarter development in Belfast. In January 2015, the operator of a luxury spa business in the UK known as "Titanic Spa" applied in Ireland to have TITANIC QUARTER revoked.
A trade mark or merely an address?
The Belfast group argued that TITANIC QUARTER had been used extensively as a trade mark, rather than as an address. The hearing officer acknowledged that TITANIC QUARTER was a brand capable of being used as a trade mark. Nonetheless, he concluded that the primary use of the words by businesses located in the Titanic Quarter development had been as a description of geographic location.
Was there genuine use as a trade mark in Ireland?
The Belfast group maintained that in addition to using TITANIC QUARTER itself, other businesses located in the Titanic Quarter development delivered services under the mark. It put forward evidence including website analytics, advertising materials, media coverage, financial information and details of leases. This did not win over the hearing officer. While he found that there had been some use abroad, evidence of use in Ireland relating to any of the registered services was clearly absent.
GIORDANO was registered as a trade mark in Ireland in 1997 by the Giordano group, a retailer of clothing and accessories based in Hong Kong. Verwij Fashion, a Dutch clothing business, applied in October 2015 to have the GIORDANO trade mark revoked for non-use.
Existence of Licensing and Franchise Arrangements Does Not Constitute 'Use'
The Giordano group argued that it had undertaken to create a market presence in Ireland through franchise and licensing agreements. These arrangements were found to be purely aspirational. They did not result "in the sale into Ireland of a single product bearing the trade mark". As such, they did nothing to demonstrate use of the GIORDANO mark in Ireland.
Online Presence and Incidental Sales
The Giordano group argued that its global online shop catered to the Irish market and also relied on evidence of sales to Irish customers.
The hearing officer was not convinced. Neither the facilitating of shipping to Ireland at the customer's expense nor the facilitating of purchases in Euro currency demonstrated targeting of the Irish market. He found that the mere accessibility of a website, without any attempt to attract Irish customers to avail of it, did not demonstrate use in Ireland.
As only four sales into Ireland were shown, the hearing officer found that no market for the goods had been created and the proprietor did nothing to "maintain even this miniscule level of Irish custom".
Use It or Lose It
The registration of a trade mark can be revoked if, for an uninterrupted period of five years, the mark has not been put to genuine use as a trade mark. These decisions highlight that the onus is on rights-holders to produce "solid and objective evidence of effective and sufficient use" of their trade mark in the relevant market. The GIORDANO decision also serves as a reminder that global e-commerce companies should evaluate whether they are doing enough to maintain their trade marks in Ireland.
Contributed by Charleen O'Keeffe