Abstract:
This note explores the UK, Singapore and European Union (“EU”) case law on partial revocation of a registered trade mark for non-use in light of the recent UK decision of Maier v ASOS plc (“Maier”). It shows that the UK and Singapore courts have hitherto, in determining whether a trade mark is subject to partial revocation for non-use, adopted an approach based on the “fair description” of the actual evidence of use, with only secondary emphasis on the actual terms of the specification. Conversely, it shows that the EU courts’ approach has been to analyse the precise terms of the specification, albeit from the perspective of the average consumer of the goods/services in question. It argues that, despite achieving similar outcomes, there is a certain tension between these dissimilar approaches that may be of particular concern to intellectual property (“IP”) professionals seeking to frame their clients’ cases in the most advantageous way. It submits that the recent case of Maier marks a step forward by unifying the more technical approach of the European courts with the common-sense approach adopted by the UK courts, as well as providing the opportunity for a timely review of the applicable principles.