Nestle UK Ltd v Zeta Espacial SA; MAGIC BALL Trade Mark

Date

23 June 1999

Legislation

Trade Marks Act 1994 ss. 26, 46, 76

Keywords

revocation of trade mark; non-use of trade mark; proper reason

Counsel

Emma Himsworth, Thomas Mitcheson

Solicitors

Bird & Bird; Willoughbys

Judge

Ward, Buxton, & Arden LJJ

Court

High Court (Chancery Division)

Reported

[2000] ETMR 226, [2000] RPC 439

Summary

The Applicant applied to revoke the Respondent's registration of the trade mark 'MAGIC BALL' in respect of confectionary because they had not been used for a period of five years under section 46(1). The Respondent admitted the non-use, but contended that there were 'proper reasons' for such non-use, namely that the development of the product for which the trade mark was to be used (a lollipop made of 'popping candy') had suffered a number of setbacks.

Decision

It was held that since the Respondent had invested time and money in the development of the products and had a genuine intention to use the marks, and the technical difficulties affecting the production of the intended product could be a proper reason for non-use, though such difficulties might not be in all cases.

Furthermore, the comparison of the words 'proper reasons' with the phraseology from the 1938 Act, 'special circumstances' was unhelpful, given the 1994 Act's origin in the European Trade Marks Directive (89/104).

On revocation for non-use see also Ansul v Ajax (European Court of Justice) and Laboratoire de la Mer (Court of Appeal).