Kathryn Hams v Indian Motorcycle International, LLC

This matter concerned an opposition by Kathryn Hams (the Opponent) against the registration of a trade mark by Indian Motorcycle International, LLC (the Applicant). The dispute arose from the Applicant's trade mark registration, and the Opponent sought to have it removed from the Register. The proceedings were heard by Debrett G. Lyons, a Hearing Officer at Trade Marks Hearings.

The primary legal issue before the Hearing Officer was whether the Applicant had sufficiently demonstrated the use of its trade mark in relation to the goods and services for which it was registered, or whether the registration should be removed. Specifically, the Hearing Officer had to consider the onus of proof regarding non-use, which lies with the Opponent under section 100 of the Act, and determine if this burden had been discharged on the balance of probabilities. The Hearing Officer also had to consider the scope of the trade mark registration and whether it was reasonable to preserve it for all the goods and services listed.

The Hearing Officer reasoned that while the Opponent bore the onus of proving non-use, the evidence presented, particularly concerning the specification of "spoilers for automotive vehicles," did not satisfy the Hearing Officer that it was reasonable to preserve the registration for this particular item. However, the Hearing Officer exercised discretion and allowed the trade mark to remain on the Register for "automotive land vehicles," finding this to be a more appropriate and less redundant description. The Hearing Officer noted that "automotive vehicles" was a broader term than "automotive land vehicles" and saw no reason for wider protection.

Consequently, the Hearing Officer ordered that the trade mark be removed from the Register in respect of "spoilers for automotive vehicles." The Register was to be amended to limit the registration to "Automotive land vehicles" within one month of the decision, unless a notice of appeal was filed. In relation to costs, the Hearing Officer found that both parties had achieved a measure of success and therefore ordered that each party bear their own costs.