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Can evidence of use that is no use still be of use?

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

Minimax GMBH & Co v Chubb Fire Ltd, a Chancery Division decision from England and Wales, was handed down yesterday by Mr Justice Floyd. It has not yet been posted on BAILII, but was noted this morning by the subscription-only LexisNexis Butterworth service.

Way back in 2005 the Trade Marks Registry ruled on Minimax's application to revoke two of Chubb's trade marks -- one for the device pictured on the right and the other for the word MINIMAX itself. According to Minimax neither mark had been used for a period of five years. The hearing officer agreed on the evidence that there had been no genuine use of the marks during that period.

Minimax had previously applied to register mark MINIMAX; Chubb, minus its two earlier registered marks, now opposed, claiming that use by Minimax of that mark was liable to be prevented by the law of passing off and the hearing officer agreed. Reaching a decision without the benefit of either an oral hearing (since neither side asked for one) or cross-examination, he concluded that Chubb indeed enjoyed goodwill and a reputation in MINIMAX in respect of fire extinguishers, their servicing, refurbishment and embellishment. The evidence on which Chubb relied in this hearing was the same as that it relied on in the 2005 hearing, delivered in the form of a witness statement made by its commercial manager. Given that the parties' marks were identical, the hearing officer upheld Chubb's opposition and refused the application. Minimax appealed.

Yesterday Floyd J allowed the appeal. In his view the hearing officer had treated the evidence of Chubb's commercial manager as evidence of Chubb's continued use of the MINIMAX mark, concluding that there had been sufficient evidence of Chubb's goodwill and reputation in it. Since this was the wrong approach the court would review the evidence itself. Doing so, there did not appear to be any detectable proper basis for holding that Chubb had retained a sufficient residual reputation in the mark to be able to succeed in an action for passing off against Minimax's future use of the mark applied for. Any evidence of use was scant or trivial.

The IPKat guesses that Chubb must have been really annoyed with itself, having both lost control of the rather attractive MINIMAX mark and then being unable to stop its rival getting hold of it. But, in terms of log-term business strategy, was this opposition ever likely to achieve anything other than mild nuisance value? Merpel says, since Chubb could not in any event stop Minimax using its own name, was this a bit of a dog-in-the-manger opposition?

Dog in a manger here
Dog à manger (Korean style) here
Dog à manger (American style) here

Full post as published by IPKat on July 30, 2008 (boomark / email).