Failure To Use Your Trade Mark Can Leave You Feeling Blue

Shortly after the birth of Beyoncé’s first child with husband Jay Z, the couple applied to trade mark her name, “Blue Ivy”, at the US Patent and Trade Mark Office (USTPO). The application was successfully opposed by Veronica Morales on the basis of her prior use of the Blue Ivy mark, which at that time was unregistered but which she had used since 2009 in her business as an events and wedding planner. Morales has since successfully registered Blue Ivy at the USTPO in categories of wedding planning, events and other related marketing and advertising.

In October 2013, Jay Z told Vanity Fair that his intention in applying for the Blue Ivy trade mark was not to use the mark, but to prevent others from using it and benefitting from that use.

Since then, a further application has been made at the USTPO on behalf of Beyonce and Jay Z, this time to register “Blue Ivy Carter.” Morales has once again opposed the application. Part of that opposition is premised on Jay Z’s interview with Vanity Fair in which he states that, in respect of the earlier application, he had no intention to use the mark applied for.

As the second round of this dispute heats up in the US, it is important to note that principles of ‘use’ apply equally to UK and EU trade marks. Not only must the application for the trade mark confirm that the applicant has a genuine intention to use the trade mark but further, if the trade mark is not put to genuine use within a continuous period of 5 years, the trade mark will be vulnerable to revocation either in whole or in part.

Case Law: Cartier International AG

A recent high profile example of revocation for non-use is that of an EU trade mark belonging to luxury jewellery business Cartier International AG. Cartier did not file any evidence of use in response to the application for revocation and so the application succeeded, with revocation currently pending on the EU trade mark register.

Why Cartier did not file any evidence is not known: it may be that there was no evidence of use or alternatively, that the mark registered was not of sufficient value to warrant the fight. In either case, thought turns to why Cartier applied for that trade mark in the first place. It is likely that, at the time it applied for the trade mark, Cartier was either already using the mark within the categories of goods and services applied for (which included books, advertising, payment transactions and telecommunications) or that it had plans to expand into those areas, with those plans subsequently having changed. In any event the case serves as a valuable lesson that, if you don’t use a trade mark, there is a significant risk that you could lose it.

Sumi Begum is a Solicitor at Nelsons specialising in Intellectual Property disputes. For further information, please contact Sumi on 0800 024 1976 or email newbusinessteam@nelsonslaw.co.uk