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Legal Update

UK registered trade mark for THE CARLYLE hotel name revoked for non use

2 March 2010
Mayer Brown Legal Update

The owners of the Carlyle Hotel in New York have lost their UK trade mark for the CARLYLE name because that name had not been used in the UK.

The Carlyle LLC had its UK trade mark registration for THE CARLYLE revoked in full because it was unable to provide evidence of genuine use of the trade mark in the UK within the relevant five-year period since registration.

The registered proprietor was The Carlyle LLC, which owned the UK trade mark registration for THE CARLYLE. The trade mark registration covered "hotel, restaurant, cabaret, cocktail lounge, banqueting services and health spa services" under Class 42.  The revocation action was before the UK Trade Marks Registry. 

The applicant (Mascha & Regner Consulting KEG) applied for the trade mark registration to be revoked on the grounds of non-use.  The relevant section says that the registration of a trade mark may be revoked on the grounds:

  • that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the UK, by the owner or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use; or
  • that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use.

The Carlyle LLC put forward evidence of use including details of a sales office located in London which it said had the facility to book rooms as well as other facilities provided by the hotel.  It said that UK-based customers could also book rooms at The Carlyle through well-known travel agents and tour operators. 

It went on to argue that advertising and marketing of the hotel had taken place in the UK and that this was sufficient to constitute genuine use of the mark in the UK.

The UK Trade Marks Registry noted that the hotel was located in New York and that it provided its facilities there, not in the UK.  It also said there was nothing in the evidence to show that The Carlyle LLC had placed any advertising in the UK for any of its services.  Although there was evidence that the company had its own website, it could not tell when this had been established.  There was evidence that UK customers had stayed in the NYC hotel during the relevant period, but there was no detail about how they arranged those stays.  The evidence also contained numerous extracts from newspapers and magazines mentioning the hotel and some of its facilities, all of which had been written by third parties and were simply reviews of visits the authors had paid to the hotel.  Importantly, they did not demonstrate use of the name by the company.

The Registry concluded there was no evidence within the relevant period of any marketing or advertising of the hotel and its facilities in the UK under the name by the registered owner.  On this basis, the Registry did not have to consider whether advertising and marketing alone would have been sufficient to constitute genuine use of the mark in the UK for services provided elsewhere.  It decided that the company had not shown genuine use of the mark in the UK in respect of any of the services covered by the trade mark under its registration as filed and therefore revoked the trade mark in full.

This case highlights the difficulty for hotel owners who want to protect their brands in countries where they do not have properties.  Many countries have laws under which trade mark registrations can be lost after a period of non-use.  If the Carlyle LLC had been able to provide evidence of use of its website by UK customers this would have helped its case.  However, the Registry could not tell if the website had been established during the relevant time period or if it had been used by UK customers during that time. This shows how important it is in trade mark cases to keep records of how, when and where a name is used.  In making its decision, the Registry also provided further guidance on what constitutes "genuine use" of a trade mark under UK trade mark law.

Post script – decision by the BOIP

As a post script to this case, in separate trade mark proceedings the Benelux Office for Intellectual Property ("BOIP") has ruled that the use of a European Community Trade Mark ("CTM") in only one Member State is not sufficient to constitute genuine use of such a trade mark within the EU.  This decision may create problems for CTM owners who use their trade marks solely in one country of the EU.  Although the European Court of Justice has not yet ruled on this issue, it is likely that it would follow the BOIP's lead if faced with a similar scenario.  This would mean that a CTM could be revoked after five years if it is only used in one country of the EU. It is unclear from the decision as to the number of EU countries in which a CTM must be used to constitute genuine use. We await further guidance from the European courts in this respect.

Contrasting position under Hong Kong law

The rules regarding revocation for non-use of a trade mark differ in other jurisdictions from that in the UK. In Hong Kong for example, the Hong Kong Trade Marks Registry has said that advertising use alone of a Hong Kong trade mark for hotel services can constitute use.  This applies where the hotel services covered by the trade mark are provided outside Hong Kong.  This means that an owner of a hotel located and providing services outside Hong Kong could find it easier under Hong Kong law to demonstrate use to preserve a Hong Kong trade mark registration covering those services than might be the case in an equivalent situation under UK law.  This is because UK law does not make clear whether advertising use alone is enough to constitute genuine use.  Ultimately advice should be taken in your local jurisdiction if you have a concern regarding such non-use.

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