St Kilda Tug-of-Love – further details

As reported by Catherine Lee in Wednesday's IPKat post (here), the National Trust for Scotland (NTS) and the Western Isles Council (WIC) are currently involved in a dispute over the ownership of the word trade mark ST KILDA, with the former currently appealing to the General Court following the two rulings rejecting its opposition to WIC’s application before the Opposition Division and the Fourth Board of Appeal respectively.

Catherine’s post mentioned these two decisions.  However, at the time, she was unable to get hold of copies. They are accessible on OHIM’s site when you search for the ST KILDA mark itself, rather than through OHIM’s case law search function.

The Opposition Division

NTS filed their opposition to WIC’s application under Art 8(4) of the CTMR, on the basis of the non-registered trade mark of ST KILDA used by NTS in relation to, appropriately enough, all the goods covered by WIC’s application.

There are a variety of hurdles to overcome in successfully mounting an opposition under Art 8(4) CTMR. To overcome the first hurdle it was for NTS to show that there was usage in the course of trade of the ST KILDA mark by NTS prior to WIC’s filing which was of more than ‘local significance’ in the relevant territory (the United Kingdom in this case).

In an attempt to satisfy this requirement, NTS supplied various evidence as follows:

-       Maps and title deeds (proving the Trust’s ownership of the island)

-       Press releases

-       Sample products

In considering the evidence submitted, the Opposition Division noted that no evidence of sales, or turnover was produced by WTS, nor any affidavits attesting to the usage of the mark.

The Opposition Division also noted that, whilst NTS had supplied press releases in relation to the island of St Kilda, these were primarily aimed at promoting the island itself, rather than any goods or services bearing the ST KILDA mark. Further, the usage evidenced was not regarded as true trade mark use because no link was made between the ST KILDA mark and the specific goods and services made available by NTS.

In summary, the Opposition Division held that, while NTS had submitted evidence to show the environmental and cultural activities of NTS in relation to the island of St Kilda, they had failed to satisfy the above test, primarily because insufficient evidence was produced that goods and services were actually identified and offered on the market by WTS under the ST KILDA mark. As a result, opposition under Art 8(4) failed at the first hurdle.

Board of Appeal

As mentioned above, following the rejection of the initial opposition, NTS appealed, with the Board of Appeal giving their ruling earlier this year on 26^th March.

NTS’s grounds of appeal were that the Opposition Division had failed to consider the global awareness of St Kilda as a travel destination and that NTS had created a significant mark which denoted both a destination and a source of goods. At the same time, NTS argued that WIC’s application should be refused under Art 7(1)(c) CTMR on the basis of its descriptive nature.

In considering NTS’s appeal, the Board expanded on the requirements on an opponent to successfully oppose an application under Art 8(4). The Board stated “it follows that the rights under Art 8(4) CTMR must be those of a trade mark or trade name or other distinctive sign nature, i.e. related to identifying the origin of goods or services or the identity of the company or entity using the sign’.

The Board also highlighted that for the purposes of Art 8(4),  it was necessary to show a pre-existing right recognised by national law, for example in the UK, under the laws of passing off, that could be used to prevent the use of the applied for mark. For example, in the UK, such a pre-existing unregistered right, could be passing off.

In reaching its decision, the Board rejected NTS’s opposition not only on the basis of the evidence submitted, but also on the basis that the contentions made by NTS relating to its link to ST KILDA did not refer to an unregistered mark at all, and further that NTS had ‘failed to substantiate a factual and/or legal background with regard to the existence of such a right’.

Referencing NTS’s submission of title deeds showing ownership of the island, the Board felt that, rather than acting in the capacity of a trade mark owner in using the ST KILDA mark, NTS had shown it was using supervisory/administrative powers which appeared to stem from administrative law.

To this end, the Board found that for the purposes of Art 8(4), NTS failed to produce sufficient evidence to show that such rights were recognised under national law and that such rights extended to asserting rights in the name itself and to preventing third parties from using the mark.

Owing to this failure, the Board rejected NTS’s appeal. Explaining its decision, the Board stated that if NTS were successful, it would be analogous to a member state claiming unregistered rights in its designation, and consequently being permitted to restrict third parties from doing business using the name.

The Board also rejected NTS’s appeal on Art 7(1)(c) grounds, stating that it was not a ground of appeal or part of the appealed decision of the Opposition Division.

As mentioned above, NTS has appealed again to the General Court. Certainly the two decisions together seem fairly solid, both in terms of the rejection of NTS’s evidence, and also the Board’s interesting assessment of the nature of rights required to satisfy Art 8(4) opposition. However, the question remains whether further NTS could have adduced sufficient evidence to show their particular rights were recognised under national law for the purposes of Art 8(4).