21 June 2019Trademarks

UKIPO invalidates ‘Carry On’ film TMs

The UK Intellectual Property Office (IPO) has invalidated a series of trademarks related to the British “Carry On” film series, owned by UK film and television production company ITV Studios.

In its  decision, issued on Tuesday, June 18, the IPO found that ITV had failed to demonstrate genuine use of the marks (UK numbers 2475818; 2162140; and 2146670) for all goods and services except for the production and distribution of films in class 41.

Brian Baker, a friend of the series’ late creator Peter Rogers, brought the revocation action in April 2018. Baker, who was listed as a licensee for two of the three marks at issue in the dispute, sought invalidation of the marks for all goods and services except the production and distribution of films.

A total of 31 films in the “Carry On” series were released between 1958 and 1992. ITV, which owns the trademark rights to the series, said this was the most films in any British series.

ITV licensed the marks for use on products such as games and DVDs but failed to demonstrate genuine use of its marks for any of the goods and services at issue in the dispute, said the IPO.

ITV ran an advertising campaign in 2014 worth £250,000 ($316,781) for the DVDs, which the IPO agreed was “a serious attempt to secure customers” for the films.

In spite of this, however, the IPO said it was not convinced that the evidence provided was sufficient to establish use as a trademark.

The advertising campaign, the IPO said, was not enough “to create in the public’s mind an expectation that DVDs bearing the words “Carry On” would be the responsibility of a single trade source”.

Similarly, with respect to the licensing of the marks for games, the IPO found that ITV had not done enough to establish that the public was likely to associate the “Carry On” marks with a single source.

In addition, ITV’s evidence was insufficient in establishing use of the marks for this purpose, the IPO found.

“What is lacking is any evidence of royalties actually paid under these licences or confirmation that the terms of the licence, such as installation of games terminals, were complied with, or when or how,” the judgment said.

ITV also sought to convince the IPO that it had made use of the marks with respect to selling the films through e-commerce marketplaces such as iTunes and Amazon.

The film and television producer’s evidence with respect to iTunes, however, was “imprecise”, the judgment said. The IPO said that it could not distinguish between the use of the mark with respect to downloads, streaming or sales of physical copies.

In relation to the licensing of the films on ITunes and Amazon, the IPO said that it was “far from clear” how these agreements involved any genuine use of the marks.

“Indeed, it seems likely that the services were in fact offered under marks such as iTunes and Amazon, and that ‘Carry On’ was used exclusively to describe the film which the consumer might view,” the judgment read.

Two of the marks (2475818 and 2162140) were invalidated for all goods and services except for the production and distribution of films, while the third mark (2146670) was invalidated entirely.

The IPO ordered ITV to pay costs of £2,600 to Baker.

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