The "Ben Wyvis" Trademark Case: Lessons on Non-Use and Revocation

The recent decision in the case of Whyte and Mackay Limited versus Drinksology Limited sheds light on the importance of actively using trademarks to maintain their validity. The dispute centered on the historic trademark "Ben Wyvis" for whisky, registered by Whyte and Mackay, which was revoked due to non-use over several decades. Here’s a closer look at the case and its implications for brand owners.

Case Background

• Trademark at Issue: The mark "Ben Wyvis," registered in Class 33 (whisky), was first registered in 1969 by Whyte and Mackay.

• Revocation Application: Drinksology Limited sought to revoke the trademark under Section 46(1) of the Trade Marks Act 1994, citing non-use during specific periods:

  • Section 46(1)(a): Non-use during the initial five years following registration (1969–1974).

  • Section 46(1)(b): Non-use during three consecutive five-year periods from 2007–2022.

Why Was the Mark Revoked?

1. Evidence of Use

   • Whyte and Mackay argued that the mark had been used for limited bottlings, including "Ben Wyvis: The Final Resurrection" in 1999 and from a rediscovered cask bottled in 2002. These releases were rare and highly priced, targeting collectors.

   • However, there was no evidence of active use between 2007 and 2022, such as sales records, marketing campaigns, or public-facing activities to maintain the brand's market presence.

2. Findings

   • The Registrar found that while minimal use in 1999 and 2002 was sufficient to save the mark from revocation under Section 46(1)(a), there was no evidence of genuine use during the later periods covered under Section 46(1)(b).

   • The "Ben Wyvis" brand was essentially dormant for 20 years, with no outward-facing activities to maintain its relevance in the market.

3. Outcome

   • The trademark was revoked with an effective date of January 20, 2012, under Section 46(1)(b).

Key Lessons for Trademark Holders

1. Use It or Lose It

   • Trademarks must be used continuously in the marketplace to maintain validity. Sporadic or token use may not be sufficient, especially if there are significant gaps in activity.

2. Document Evidence of Use

   • Invoices, marketing materials, and records of sales are critical to demonstrating genuine use. Without this evidence, even historic brands can lose their trademarks.

3. Genuine Use Defined

   • Genuine use must reflect real commercial exploitation to maintain or create a market presence. Minimal use may suffice if justified by the nature of the goods, but prolonged inactivity is not acceptable.

4. Proper Reasons for Non-Use

   • If there are reasons for non-use, such as production delays or industry-specific requirements, these must be clearly documented and submitted as evidence.

Final Thoughts

The "Ben Wyvis" case serves as a stark reminder of the importance of actively maintaining trademarks through consistent use and diligent record-keeping. Whether you’re managing a legacy brand or a new trademark, ensuring continuous commercial presence is essential to protect your rights.

If you're looking for expert guidance on managing and protecting your trademarks, Sort My Mark can help you navigate the complexities of trademark law and ensure your brand's longevity.