What’s the scoop on the Mr Whippy decision?

Summary

Despite “convincing arguments” against the strength of the evidence of use submitted by Unilever Plc, following the close-cut decision of the IPO on the 11 November 2019, the applicants’ appeal was dismissed by the Appointed Person on 1 June 2020.

The figurative MR WHIPPY mark (the Mark), in a partial win for the applicants, will now proceed to registration in relation to the following goods and services:

Class 30:

Coffee; tea; cocoa; sugar; rice; tapioca; sago; coffee products; bread; flour; honey; yeast; baking powder; salt and mustard; vinegar; spices; preparations for making the aforesaid goods, in so far as not included in other classes.

Class 43:

Temporary accommodation services; bar services; juice bar services.

Comment

At the IPO hearing in 2019, it was found that the opponent had failed to show genuine use of its earlier rights in the mark Mr. Whippy, except in relation to ‘Ice cream’ and, in relation to its earlier WHIPPY mark, no use was found. This appeal related to the question of whether genuine use had been established for the opponent’s MR WHIPPY mark in relation to “Ice cream”. The applicants contended that the quality and sufficiency of evidence provided in relation to the evidence of use, meant that the Hearing Officer should not have found genuine use in relation “Ice Cream” and therefore the opposition should have failed entirely.

The law

It is important to bear in mind the limits of the appellate court’s powers. The Appointed Person will only overturn a decision of the Hearing Officer if, but only if, it is wrong. This means that any natural assessment does not warrant a reversal of the previous decision because the judge “might have reached a different conclusion of the facts or expressed themselves differently” (Apple Inc v Arcadia Trading Ltd [2017] EWHC 440 (Ch) (10 March 2017).

In this case, there was no question of the legal principles; rather a potential error in applying these legal standards to the evaluation of the facts in hand that is often a matter of degree.

Decision/judgment

The Appointed Person agreed with the Hearing Officer’s conclusions namely that:

  • Criticisms were made of the opponent’s evidence of use in relation to the evidence provided for ice cream mix as opposed to ice cream per se. They agreed that it therefore cannot be assumed that the ice cream mix was subsequently sold as ice cream under the mark.

However, the absence of sales figures for ice cream per se, was not itself fatal, when considering the size of the relevant market. In addition, the Appointed Person mentioned that each case is ultimately determined on its own facts and that there was no unique way of satisfying the evidential requirements.

  • On the balance of probabilities, the Appointed Person was prepared to accept that the agreements with third parties who purchased ice cream mix from the opponent, would likely sell ice cream under the Mr Whippy mark, although no evidence was provided by those third parties attesting to those sales.
  • Other valid criticisms made in relation to the minimal photographic evidence (and some of which, falls outside the relevant period in question), did show some examples of the MR WHIPPY mark being used to sell ice cream.

Taking the above into account and noting that the evidence provided was not without deficiencies, the Appointed Person said that the Hearing Officer applied reasonable standards of evaluation and reached a fair conclusion.

On this basis, the Appointed Person upheld the earlier decision.

Trade mark decision: O/302/20

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