05 July 2019

What a carry on! The UKIPO Revokes Carry On Trade Marks

The Carry On film franchise, a British national treasure, has been carrying on in Cinema and TV screens for over 60 years. Earlier this month a ruling by Ms Heather Harrison, (“Hearing Officer”) of the UK Intellectual Property Office has invalidated a couple of ITV Studios owned Carry On marks related to the much loved franchise.

In April 2018, Brian Baker (“the applicant”) sought to revoke three trade marks registered in the name of ITV Studios Limited (“ITV”). The applicant claimed non-use in the five-year period following the dates on which the marks were registered, as well as non-use in the five-year periods preceding the filing of the revocation actions.

Two of the marks, for which revocation was sought, and which the applicant is recorded as licensee, are UK trade mark number 2162140 CARRY ON registered on 19 March 1999 in classes 9, 16 and 41 for goods and services including video recordings, printed matter; film entertainment; television and cinema entertainment; production, distribution and provision of film and UK trade mark number 2146670 CARRY ON registered on 16 October 1998 in classes 9, 25 and 41 for goods and services including Audio, video and cinematographic recordings; T-shirts; and entertainment services; production and direction of video and cinematographic recordings.

The third mark, UK trade mark number 2475818 CARRY ON registered on 15 August 2008 in Classes 16, 21 and 41 for goods and services including books, household or kitchen utensils and entertainment services in the form of television programmes, radio, cable, satellite and Internet programmes; production and presentation of television programmes, shows, films, videos and DVDs.

Under the UK Trade Marks Act 1994, revocation of a registration can be instigated on the grounds of non-use once it has been registered for 5 years.

In her decision the Hearing Officer found that ITV had failed to demonstrate genuine use of the CARRY ON marks under UK registrations numbers 2475818, 2162140 and 2146670 for all goods and services except in Class 41 for “the production of films, production, distribution of films”.

Under the Trade Marks Act 1994, for proof of use to be genuine it does not have to be substantial or continuous but it requires use of a trade mark in its registered form or a form which does not alter the distinctive characters of the mark, in relation to the goods or services for which it is registered.

From the evidence provided, the Hearing Officer said ITV licensed the marks for use on products such as games and DVDs but failed to demonstrate genuine use of its marks for any of the goods and services at issue in the dispute.

The Hearing Officer granted ITV’s expenditure of a £250,000 advertising campaign in 2014 for DVDs which bear the CARRY ON mark was a serious attempt to secure customers for the films. The level of use is, while modest, adequate (just) to establish sufficiency of use in relation to DVDS.

The Hearing Officer said despite this, however, she was not convinced that the evidence provided was sufficient to establish use as a trade mark.

The Hearing Officer further added the advertising campaign was not enough to create in the public’s mind an expectation that DVDs bearing the words “Carry On” would be the responsibility of a single trade source.

Similarly, with respect to the licensing of the marks for games, the Hearing Officer found that ITV had not done enough to establish that the public was likely to associate the Carry On marks with a single source.

In addition, the Hearing Officer found ITV’s evidence was insufficient in establishing use of the marks for this purpose.

In relation to the licensing of the films on ITunes and Amazon, the Hearing Officer said that it was far from clear how these agreements involved any genuine use of the marks.

The revocation application was successful subject to appeal and the marks will be revoked from the earliest date sought, that being:

(i) Trade mark number 2475818 will be revoked from 16 August 2013 for all goods and services except “production of films”; “production, distribution of films” in class 41, for which it will remain registered;

(ii) Trade mark number 2162140 will be revoked from 20 March 2004 for all goods and services except “production, distribution of film” in class 41, for which the mark will remain registered;

(i) Trade mark number 2146670 will be revoked for all goods and services from 17 October 2003.

As the applicant was successful in this case, the IPO ordered ITV to pay costs.

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