Fun Radio - UK Registry guidance on acceptable variations of registered marks

Capital Radio plc had originally applied for registration of the FUN RADIO (& Device) trade mark covering various goods and services in Classes 25, 35, 38 & 41 under No. 2163342. This trade mark was subsequently assigned to Children's Radio UK Limited (CRUK). The registration procedure was concluded on 11 June 1999. On 20 May 2006, Societe d'Exploitation Radio Chic (CHIC) applied to revoke the registration on the ground that it had not been used at all since the date of registration under the provisions of Section 46 (1) (a) and (b) of the UK Trade Marks Act 1994 (Case O-230-08). Revocation was sought in relation to all the goods and services covered by the registration.

FUN RADIO original registered trade mark



CRUK filed a counterstatement in defence of their registration. Various examples of use were filed in order to defend the Revocation Action and included three variations of a device logo and/or use of the words FUN RADIO.



There was no dispute as to whether the use was genuine. It was also agreed that the form of the mark as registered had never been used. However, the question was whether the actual marks used constituted use of the registered mark in a form with different elements which did not alter the distinctive character of the registered mark as allowed by Section 46(2). Such use would have saved the registration under this provision.

The Hearing Office assessed the distinctive character of the registered trade mark. It was found that although the words FUN RADIO were not highly distinctive per se they were not lacking in distinctiveness as they did not have a precision of meaning but rather were merely allusive. The mark as registered contained a clear graphical element that was not composed of traditional background matter or embellishments such as simple boarders or shading. Instead, in this case the background consisted of three bands of colour and a splatter device. Furthermore, the colours were obviously important as they had been claimed as a feature of the registered mark. Therefore, although it was determined that the words FUN RADIO were the dominant and most memorable part of the mark as registered, the graphical elements were not insignificant in creating the overall impression. Therefore, both the words and the graphic elements contributed to the distinctive character of the mark as a whole.

None of the marks used contained the graphical element of the registered trade mark. Furthermore, in the mark as registered the words FUN and RADIO appeared on two separate lines.  However, in all the evidence of use filed the words FUN and RADIO appear side by side.All the figurative versions of the mark used contained "stars" which were not present in the registered mark. As such, no evidence of use of the mark as registered, or in a form differing in elements that did not alter the distinctive character of the mark, had been filed and therefore the registration was revoked in its entirety.

Summary
This case has highlighted the importance of using a mark in the form registered. If a variation of the mark is used a registration may be vulnerable to revocation on the ground of non-use. If a different mark is adopted then it is important to file a new application to ensure the mark actually used is adequately protected. A further point to take home is that accurate records of use of trade marks should be kept to defend any attacks on registrations by third parties.

Boult Wade Tennant

This information has been prepared by Boult Wade Tennant. For further information please email Charlotte Duly on cduly@boult.com or contact your usual adviser.

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