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Trade mark invalidity applications and the importance of filing relevant evidence

Print publication

10/04/2015

Walker Morris has successfully acted for an applicant for invalidity in respect of the registered mark SOLAFIELDS. The Registrar found the mark, registered in Class 40 for the “production of electricity from solar photovoltaic farms” invalid and cancelled its registration.

The proprietor of the SOLAFIELDS mark, GB Renewables Investments Ltd, sent a letter before action to the applicant for invalidity who trades as SolarFields UK. The applicant for invalidity adduced evidence to support its argument that the term Solar Fields was a descriptive term used to describe solar photovoltaic installations located in fields and that numerous traders used those words to describe installations of this kind. In the judgment, the Registrar emphasised the importance of the applicant’s evidence taken from UK websites showing that people used the terms “solar farm” and “solar field” interchangeably. In this sense, the case is a good example of the importance of adducing evidence that relates to the case – evidence relating to developments elsewhere in the word was not, in this case – which pertained to a UK registered trade mark – relevant.

In issue in the case was section 3(1)(c) of the Trade Marks Act 1994, which states that a trade mark shall not be registered if it consists “exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services”. The Court, having considered the evidence, considered that the term SOLAFIELDS was “not sufficiently far removed” in meaning or in sound from the descriptive words “solar” and “fields” to avoid being excluded from registration by section 3(1)(c).

The Registrar also found that the mark should have been excluded from registration under section 3(1)(b), namely that as a descriptive mark, SOLAFIELDS was devoid of distinctive character.

The Registrar then considered whether, despite having failed to meet the requirements of sections 3(1)(b) and (c) the mark had nevertheless acquired distinctiveness through use and found that it had not done so.

Accordingly, the Registrar gave judgment for the applicant.