FLOWATER" Use Your Mark or Lose It

In a recent decision (O/1086/24), the UK Intellectual Property Office revoked the trademark "FLOWATER", owned by Flo Water, Inc., for failing to meet the criteria of genuine use. This case underscores the importance of actively using registered trademarks to avoid revocation. Here’s a breakdown of the case, the arguments, and key takeaways for trademark holders.

Case Overview

• The Parties:

  • Proprietor: Flo Water, Inc. registered the "FLOWATER" trademark in the UK in 2017 for goods in Classes 11 (e.g., water coolers, filtration systems) and 32 (e.g., bottled water).

  • Applicant: BHS Trans Kft. filed for revocation in 2023, citing non-use of the mark during the statutory five-year period.

• The Key Issue: Was the "FLOWATER" trademark used genuinely in the UK for the goods it was registered?

Findings of the Decision

1. Evidence of Use:

   • Flo Water, Inc. submitted invoices, shipping documents, and promotional materials. However, evidence was largely limited to:

     • A single UK customer (SoulCycle) purchasing high-value water refill stations and filters in 2019.

     • Website and social media activity that primarily targeted the US market, with no clear evidence of UK-specific targeting.

2. Genuine Use Requirements:

   • To avoid revocation, trademark holders must demonstrate real commercial exploitation of the mark in the UK.

   • The evidence must show consistent use sufficient to maintain or create a market presence. Sporadic or minimal use does not meet this threshold.

3. Key Deficiencies:

   • Flo Water failed to provide evidence of:

     • Regular and widespread sales in the UK.

     • Marketing or promotional efforts targeting UK consumers.

     • Use of the trademark beyond a single transaction in 2019.

4. Outcome:

   • The IPO found that Flo Water’s use was insufficient to constitute genuine use.

   • The "FLOWATER" trademark was revoked effective 20 March 2023.

5. Costs:

   • Flo Water, Inc. was ordered to pay £1,600 to BHS Trans Kft. for legal costs.

Key Lessons for Trademark Owners

1. Genuine Use is Essential:

   • Trademarks must be actively used in the relevant territory. Even minimal use can suffice if it reflects real commercial activity, but sporadic or one-off sales won’t meet the standard.

2. Target the Right Market:

   • Evidence of use must demonstrate activity aimed at the specific market where the trademark is registered. Global websites or US-focused marketing efforts won’t protect a UK registration.

3. Maintain Comprehensive Records:

   • Keep detailed and organized records of sales, marketing activities, and customer interactions. This evidence is critical if your trademark use is challenged.

4. Proactive Management:

   • Regularly review the use of your trademarks. Ensure they are visible in the marketplace and associated with the goods or services for which they are registered.

Conclusion

The "FLOWATER" case is a stark reminder of the "use it or lose it" principle in trademark law. For businesses, actively using trademarks and maintaining strong documentation are crucial to safeguarding intellectual property rights.

If you're concerned about maintaining your trademark rights or need assistance with registration and compliance, Sort My Mark is here to help. Reach out to us for expert advice on protecting your brand’s identity.