Money Mapping opposes Moneymap: it's no use where there's no use ...

While big decisions from big courts are always important, if you want to know how a jurisdiction's trade mark system functions, it's not just helpful but reassuring to see how it works down at the lower reaches, in decisions by hearing officers and on appeal from them. That's why this Kat felt cheered at reading Integrated Financial Arrangements plc's application; opposition by Motu Ltd (0-334-14), a recent (28 July) decision by Katfriend and Appointed Person Anna Carboni on appeal from the UK Intellectual Property Office.

Maps and money: a happy combination ...

Integrated Financial Arrangements (IFA) applied to register a series of two word marks, MONEYMAP and MoneyMap, as UK trade marks for "“the provision of financial information, namely analysis of investments in portfolios" (Class 36). Motu opposed, maintaining that IFA's marks were both similar to its earlier mark "Money Mapping" (depicted above, right) which was registered for "insurance services, financial affairs, monetary affairs, real estate affairs, financial planning, collection of financial information" (ie identical or similar services).  IFA put Motu to proof that its earlier mark had been used during the five-year period before the date of publication of IFA's application. The hearing officer held that Motu's evidence did not enable her to reach a conclusion on the extent to which its mark had been used, since there were no turnover figures, no indication of marketing spend and no evidence to show how or whether the average consumer was exposed to the mark at all.  she therefore dismissed the opposition for lack of sufficient proof of use. Motu appealed and also sought to adduce additional evidence in the form of a witness statement by Motu's director providing information as to its mode of operation.

The Appointed Person dismissed the appeal and the application to adduce further evidence.

* Where an applicant puts the opponent to proof of use, it is for the opponent to file its evidence of use along with any other evidence in chief on which it relies in support of its opposition. Here, Motu's account of how the earlier mark had been used was in the vaguest of terms: it referred to just (i) one piece of paper on which the words "Money Mapping" was written by hand, bearing a date within the relevant period, and (ii) another piece of paper, this time undated, bearing the earlier mark.

* While the handwritten representation on the first document was not identical to the earlier mark as registered, it was probably within the scope of use under the Trade Mark Act 1994, section 6A(4)(a), being a "use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered". However, without further examples, it was not possible to conclude that its appearance was always so close to the earlier mark as registered. Nor was there any no concrete information about how documents like the second one had been used. Accordingly the hearing officer's assessment of the scant evidence filed on Motu's behalf was well within the bounds of her discretion: Motu's evidence was simply not solid or cogent enough to meet the standard of proof required.

* Under the Civil Procedure Rules, CPR r.52.11(2), an appellate tribunal should not as a general rule receive evidence which was not before the registrar at first instance. There was a discretion to admit fresh evidence on an application by the party seeking to adduce it; however, one should exercise that discretion in accordance with the principles articulated by the Court of Appeal in Ladd v Marshall and the overriding objective of dealing with the case justly and at proportionate cost under the CPR, r.1.1.

* In this case, the new evidence could plainly have been obtained with reasonable diligence for use at first instance. This new evidence was in any event unlikely to have an important influence on the case, since it did not add sufficiently cogent and solid evidence of use of the earlier mark to satisfy the use conditions of section 6A.

* Although the witness statement did now give some details about the size of Motu's business, there was no further evidence at all as to the use of the earlier mark in the form in which it was registered. Since the additional evidence would not change the outcome of the "proof of use" stage of the opposition, the hearing officer had not erred in concluding that Motu had not satisfied the use conditions under section 6A.  IFA's mark was therefore permitted to proceed to registration.

This Kat thinks this decision is right. The appeal looks like it must have been a loser from the start; it was argued as well as it could have been, and was dismissed on all the right grounds. It should serve as a reminder to would-be opponents that, when they are put to proof, evidence of use of their marks is key; that the time to collate it is preferably the time when their marks are actually being used, and that the time to subject it is the hearing in which its relevance is decisive.