Morris Minor trade mark registrations come to the end of the road

Do you know what the brand MG stands for? This and other issues were discussed in a recent UK IPO non-use revocation action.

 

A key feature of a successful trade mark registration system is to ensure that unused trade marks do not remain on the Register indefinitely and can be cancelled for lack of use, to enable others to adopt similar brands.  Morris Commercial recently instructed Chartered Trade Mark Attorney, James Cornish to remove registrations dating back to the 1920s for the once famous MORRIS MINOR and MORRIS automotive brands.

 

Morris Commercial is bringing a stunning all-new, electric van to market, that draws inspiration from the iconic Morris J-Type of the 1950s. Having already successfully registered trade marks containing MORRIS without opposition from the owners of the MORRIS MINOR brand, they remained concerned about the existence on the Register of old MORRIS MINOR registrations, whose owner might recommence use.  Our challenge was to remove them from the Register. 

 

The difficulty with such cases is that, even with investigations and research, it is often unknown what amount of use the proprietor will demonstrate in evidence. 

 

This case illustrates:

 

1. The UK position on judging whether a registration can remain on the Register or should be removed for lack of proof of use is not overly-strenuous for the trade mark owner, but it does need to be taken seriously. In particular, minimal use of a trade mark can suffice, provided it is genuine.  One genuine sale may suffice. 

 

2. Use in conjunction with other branding can still demonstrate use of the mark. For example, use of MORRIS in conjunction with a logo can constitute use of MORRIS, but only if it is used as a trade mark to indicate origin. 

 

3. Use by third parties and licensees can also suffice as proof of use. In the MORRIS case, it was stressed that there is no requirement that the owner licensor exercises control such as quality control over authorised users.  However, not all use by licensees will suffice, such as where a licensee is acting outside a key term of the licence, for example after the licence has expired.  Also, use by a licensee that is not to guarantee origin of the goods, but is descriptive use will not suffice.  In the MORRIS case, the issue was that certain activities in providing parts for MORRIS MINORs was said not to be valid use, as it simply related to the purpose of the product, not use of MORRIS to indicate it was a brand. 

 

4. The brand must be legible. The UK IPO was alarmed to comment that it is difficult to understand how a party trying to show use of MORRIS as a trade mark can end up relying on a photograph of a label so small that all one can see is a squiggle where the word MORRIS is supposed to be. 

 

5. The UK IPO will assess all the evidence as a whole. The MORRIS case stresses that suitable weight should be given to any evidence, depending upon its quantity, consistency, and specificness.  A problem with one aspect of evidence can be compensated for by another aspect.  The assessment is based on the balance of probabilities.

 

Having assessed the evidence, the IPO found none of the eight registrations should remain on the Register. 

 

The outcome means that the 100-year-old MORRIS registrations have been removed from the Register and the MORRIS brand can be used with confidence by Morris Commercial.

 

And MG? It stands for Morris Garages. A fact unknown to the Hearing Officer.

 

This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in July 2023.