UKIPO revokes and rewords Nestlé TMs
Health food chain wanted to revoke two marks for non-use | Nestlé failed to prove use of ‘S-26’ in relation to milk within five years.
In a partial victory for health food chain Holland & Barrett, the UK Intellectual Property Office (IPO) has revoked one Nestlé-owned trademark while rewording another trademark covering infant formulas.
The IPO’s decision, handed down on 13 September and published earlier this week, allowed Holland & Barrett’s bid to revoke one 'S-26’ trademark for food while revoking coverage of certain goods and rewording another ’S-26’ trademark.
‘S-26’ was first used in 1961 as the name of an infant formula made using 26 specialised ingredients. Nestlé acquired the business that produced the formula from Wyeth Nutrition in 2012.
The first trademark—UK00911896271—covered goods in class 29, including vegetables and potatoes, milk-based beverages, preserves and soups and was filed in 2013.
Filed in 2003, the second trademark—UK0090342518—originally covered infants' and invalids' foods, feeding preparations and nutritional formulas in class 5.
In June last year, Holland & Barrett applied to revoke both of Nestlé’s trademarks on the grounds of non-use.
Teresa Perks, on behalf of the IPO, revoked the ‘271 trademark in its entirety from 18 December 2018.
According to the IPO, Holland & Barrett had not expressly argued the point, it was clear that the health food chain’s evidence was aimed at showing that use in relation to infant milk is not sufficient to retain the registration for milk in class 29.
Nestlé had defended the goods “milk and other food preparations having a base of milk; milk substitutes; milk-based beverages” in the ‘271 trademark, submitting evidence of sales figures, photographs, and invoices.
“On the facts here the proprietor has used the mark ‘S-26’ in such a way that it can only be understood as referring to the infant formula (which belongs to class 5, not class 29), and not to milk as an identified ingredient of the infant formula. This means that the use made cannot be considered as use as a trademark in relation to milk or any other goods in class 29,” said Perks.
The IPO concluded that Nestlé had not proved genuine use of the mark ‘S-26’ in relation to milk or any of the other defended (and/or undefended) goods in class 29 within five years of its registration or after.
Additionally, the IPO revoked the ’188 mark for “infants' and invalids' foods” from February 2010 with the reworded specification “feeding preparations and nutritional formulas, all being for babies and infants” applying from this time onwards.
While it found that the ‘188 trademark had been genuinely used in relation to infant formula, the IPO said that there was no evidence of the trademark having been used for invalids' foods.
“An invalid is a person who is weak or disabled by illness or injury, so an invalid diet is likely to include easily digested and nutritious food, however, it would not include infant formula which is designed for babies and infants,” said Perks.
As both sides achieved a “measure of success”, according to the IPO, they would bear their own costs.
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