Pitch perfect appeal for James Arthur
Persons interested in exploiting their name for branding purposes need to ensure they have suitable trade mark protection in place, and once obtained they need to use the mark so they don’t lose their rights.
Background
Mr Murphy (the “Owner”) was the owner of a UK trade mark registration for JAMES ARTHUR covering goods such as CDs, printed matter and clothing in classes 9, 16, and 25, as well as entertainment services in class 41 (the “Registration”). James Grant Group Limited (the “Applicant”), which represents the well-known singer-songwriter and 2012 X-Factor winner James Arthur, filed an application to revoke the Registration on the grounds of non-use.
UKIPO Hearing Officer’s decision
By way of defence, the Owner filed an email from Ms Leanne Partridge confirming a number of sales of t-shirts and baseball caps bearing the JAMES ARTHUR mark that had been sold on eBay on behalf of the Owner. However, this evidence was not sufficient to establish genuine use of the mark as it only demonstrated a small number of low value sales. There was no evidence of any marketing beyond a few adverts on eBay, and the mark had only been used for t-shirts and baseball caps – and no other goods or services covered by the Registration. As such, the Owner had not sold enough goods to establish genuine use of the mark in the UK – particularly as the clothing and headgear market is ‘enormous’, and the level of sales shown by the Owner were low in volume and sporadic in nature.
Appeal decision
The Owner appealed the Hearing Officer’s decision on three main grounds:
1. The Hearing Officer failed to adequately consider that the Owner was a ‘struggling musician’ – arguing that musicians like the Owner should not be held to the same standard of proof of use as well-known musicians.
The Appointed Person held that where the use of a mark is so minimal, like in the present case, genuine use will not be established – particularly, where the Owner has been using James Arthur as his stage name for more than 30 years, but yet had not sold any branded merchandise for a considerable time before the Registration was applied for in 2012.
2. Given the Hearing Officer found the eBay sales to be neither ‘sham nor token’, it was incorrect for the Hearing Officer to find no genuine use of the mark.
This argument was not accepted. The Hearing Officer held that while there were some isolated sales this does not automatically translate into proof of sufficient use of the mark.
3. The Hearing Officer was inconsistent in finding that ‘numbers do not matter and then imply[ing] they do’.
The Appointed Person explained that genuine use is not a numbers game, although they can provide some guidance on proof of use. In the present case, there had been almost no sales over a 5-year period. As such, a trade mark owner will likely have to do more than highlight a tiny number of sales to demonstrate real effort to develop the market.
Overall, the Appointed Person held that this was not a serious attempt by the Owner to create or maintain a market share in the UK – particularly as the Owner conceded their use of the mark was ‘not a serious business thing with money invested’.
Conclusion
This case serves as a reminder to persons seeking to exploit their name as a brand for merchandise that they need to apply for trade mark protection as soon as possible to avoid lengthy proceedings with individuals that may seek to innocently or even intentionally capitalise on their fame. In addition, the case demonstrates to trade mark owners the importance of using the marks covered by their registrations and the value of maintaining detailed records in relation to that use.
