Urgent decision on trademark

The other case on which reliance was placed on behalf of the appellant was Mouson & Co. v. Boehm, reported in (1884) 26 Ch D 398. This authority lays down certain very important and significant principles. In the first place, it lays down the principle that mere discontinuance of user for lack of demand, even coupled with non-registration and non-assertion of the right, is not enough and it is necessary that there must be evidence of a distinct intention to abandon. In other words, the two principles are; first, mere non-user is not enough; and secondly, a distinct intention to abandon must be shown. Therefore, if the requisite period of non-user for 5 years under the Statute co-exists with an intention to abandon the use of the mark, then the mark can be struck off. This was not a war time case or even a case of prohibitive tariff. It was a case of fall or decline in the trade in the ordinary economic process of a number of years. Chitty J. at p. 405 said: "Now on the question of abandonment, it appears to me that intention to abandon must be shown." But he lays down also the principle at the same page, viz.: "In substance therefore the question of abandonment is one of intention to be inferred from the facts of the particular case." The learned Judge was satisfied in the facts of that particular case that this intention had not been proved. Chitty J. found the following facts there, viz. (1) retention of the mark; (2) the owner did not break up the moulds; (3) he did not even erase the trade marks from his books; (4) there were persons in the market who got the Roods from him who were endeavouring to effect sales; and (5) he did not give up the business to which the trade mark belonged. See the observations of Chitty J. on these specific points of facts at p. 405 of the Report. Finally, at page 406 Chitty J. actually found as follows:

"Here it appears to me that there was no absolute non-user for any sufficient time, taken in connection with all the circumstances, to show an intention in abandon. A man who has a trade mark may properly have regard to the state of the market and the demand for the goods; it would be absurd to suppose he lost his trade mark by not putting more goods on the market when it was glutted. There was some user and the result therefore is that he has not abandoned his trade mark."

16. Mouson's case is important because in the first place, it lays down that mere non-user which can be explained by many causes is not enough but it has got to be supported by an intention to abandon the trade-mark or its use before the registered trade-mark is cancelled. Secondly, it lays down the type and nature of evidence from which the intention has to be inferred one way or the other. Here again the fact is that the evidence in the present appeal before me does not show any user whatever and that is the finding of the Registrar of Trade Marks.

Hmmm...this case talks about the difference between non-use and abandonment.

Well indeed there is a difference...!!

Glad that I came across this post!

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Trademark Registration - protects your brand.

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