Trademark Application Goes (Whisky) Sour

A recent decision of the Trademarks Office (Scotch Whisky Association v Jin Ho Lee and Myong Gil Lee) has confirmed the importance for trademark applicants to have a real intention to use the mark when it is filed…..

TM 1425923
TM 1425923

The Scotch Whisky Association (a trade organisation that many scotch whisky producers participate in) opposed two applications for the word mark “BAGPIPER” and a device mark (right) including the words “McDowell’s No. 1 Celebration” filed by two individuals Jin Ho Lee and Myong Gil Lee.

The opponent established that these individuals had filed more than 30 trademark applications for marks well known in other countries in a range of disparate commercial fields. Moreover, a number of these trademarks never proceeded to registration and many of them were subsequently registered by other people.

The Hearing Officer considered that these circumstances constituted a prima facie case of lack of intention to use. The Applicants did not respond to the allegation by providing evidence of the intended use such as business plans, registered business names, and website development, or witness declarations. This lack of participation lead to the inference that the Applicants did not intend to use the two marks.

On this point, under the new legislation which was introduced via the Raising The Bar Act , a trademark applicant must now file a Notice of Intention to defend its application within a month of being notified of the opponent’s Statement of Grounds and Particulars. Therefore, if the applicants do not participate in the opposition and do not lodge this Notice of Intention to Defend, the trademark application will lapse.