Bim's Kitchen" Case: A Tale of Goodwill and Genuine Use in Trademark Law

In a recent ruling, the UK Intellectual Property Office (IPO) addressed a multi-faceted trademark dispute involving Bim’s Walthamstow Limited ("Party A") and Bim’s African Food Store Limited ("Party B"). This case revolved around claims of non-use, invalidation, and passing off, all centered on the use of the trademark Bim’s Kitchen/BIMS KITCHEN across Classes 29, 30, 32, and 43. Here's what unfolded and the lessons it offers for trademark owners.

Background: The Dispute at Hand

• Party A: Registered a series of trademarks for “Bim’s Kitchen” in 2010 and later years, covering food products, sauces, drinks, and restaurant services.

• Party B: Claimed prior use of the "BIMS" brand since 1993, selling African food products under this name and asserted goodwill in the mark.

• Claims:

  • Revocation: Party B sought to revoke Party A's marks for non-use under Section 46(1)(a) and (b) of the Trade Marks Act 1994.

  • Invalidation: Party B argued Party A’s marks were invalid due to prior goodwill in the "BIMS" name, making use of Party A’s marks an act of passing off.

Key Issues

1. Non-Use and Genuine Use:

   • Party A failed to demonstrate sufficient genuine use for many goods and services in their registrations.

   • Minimal sales activity and limited documentary evidence led to the partial revocation of Party A’s marks for certain goods and services.

2. Goodwill and Passing Off:

   • Party B relied on its use of the "BIMS" brand since the early 1990s, claiming that Party A's use would mislead customers.

   • However, gaps in evidence regarding the transfer of goodwill from Party B's predecessor (a sole trader) to the incorporated company weakened their case.

The Decision

1. Revocation:

   • Party A’s trademarks were partially revoked due to lack of genuine use. For example:

     • Revoked Goods: Prepared meals, soups, potato crisps, drinks, and catering services.

     • Retained Goods: Certain sauces and condiments where minimal evidence of use was demonstrated.

2. Invalidation and Passing Off:

   • Party B could not establish a clear chain of ownership of goodwill, undermining their passing off claim.

   • As a result, Party A’s marks were not invalidated on these grounds.

Key Lessons for Trademark Owners

1. Use It or Lose It:

   • Trademark owners must ensure consistent and visible use of their marks in the marketplace. Evidence such as sales records, marketing campaigns, and customer engagement is crucial.

2. Goodwill Requires Documentation:

   • For unregistered trademarks, proving goodwill is essential. Maintain records of business activity, branding efforts, and financial performance to establish a strong case if disputes arise.

3. Clarity in Ownership:

   • Businesses transitioning from sole proprietorship to incorporation must clearly document the transfer of assets, including trademarks and associated goodwill, to avoid challenges.

4. The Power of Evidence:

   • Both revocation and invalidation proceedings rely heavily on the strength of submitted evidence. Weak or hearsay evidence can jeopardize even a valid claim.

Conclusion

The "Bim’s Kitchen" case highlights the intricate balance of goodwill, use, and registration in trademark disputes. For businesses, it’s a reminder to stay proactive in protecting and utilizing trademarks while ensuring thorough documentation of business operations.

If you need expert guidance on trademark protection or are navigating a complex dispute, Sort My Mark is here to help you secure your brand's future.