Trade mark owners and non-use removal applicants have been offered a reminder of the importance of considering any obstacles to the use of a trade mark by the decision in Thomas v Monsoon Group.
The removal applicant who was successful before the Trade Mark Office did not contest the appeal, paving the way for the trade mark owner to overturn the decision provided there was no clear determinative matter of fact or law which would preclude the making of orders reversing the decision of the Delegate. In assessing whether any such matter existed the Court noted that an opponent to a removal application is taken to have rebutted the allegation of non-use if it establishes that the trade mark was not used due to an obstacle to its use during the relevant period. It is not necessary to show that the circumstances made use of the mark impossible but merely impractical, in a business sense, to use the mark. Furthermore, it is not necessary to show that the circumstances that constitute an obstacle existed throughout the relevant period. In this case the Delegate found that:
The Trade Mark was to be used in relation to restaurant services which were severely disrupted during the Relevant Period by the COVID-19 pandemic and the corresponding restrictions implemented by various State governments. In the present case, there is at least some evidence that the COVID-19 pandemic affected the ability of franchisees to commence their operations.
It’s worth noting that some Trade Mark Office decisions have considered whether the COVID-19 pandemic was an obstacle to use. It is clear from these decisions that the Office will require detailed evidence of how the pandemic prevented use of a particular mark before making such a finding.
When assessing the circumstances relevant to a non-use removal application it is important to investigate not only what use may have occurred but the broader landscape which may include obstacles to use of the mark. Factors which might lead to the exercise of discretion by the Delegate to refuse removal should also be considered.