Trade mark filing strategies involve a variety of techniques to ensure that you get the protection your business needs for its brands.
This article covers one of these strategies known as “evergreening”. Evergreening is a tactic by which trade mark proprietors seek to ensure the widest possible protection of their brands by re-registering trade marks which are identical to their previously registered marks, often in different classes and/or in slightly different forms, before the previously registered marks becomes vulnerable to cancellation for non-use (see below for details). Depending on your point of view, evergreening is either a lawful, legitimate strategy to ensure the maximum protection for your business or a dubious way to “game” the trade mark system.
A trade mark can only be registered (and renewed) if it is intended to be used in the course of business; once registered, the proprietor of the trade mark has five years (grace period), from the date of registration, to put the mark to genuine use.
In the UK the Intellectual Property Office’s Trade Mark Register is an increasingly crowded place. The ability for new entrants to find brands which do not compete with existing rights is increasingly hard. Accordingly, an applicant who wants to register a sign as a trade mark may find it is similar or identical to an existing registered mark. Some applicants may choose to apply to the Intellectual Property Office to cancel the competing registered trade mark on the basis that the trade mark proprietor has not put its mark into genuine use for a continuous period of five years.
For businesses that have registered trade marks but for whatever reason have not put those marks to genuine use, evergreening represents a way to protect the vulnerable marks and to circumvent the obligation to prove genuine use of an earlier mark after the grace period has expired.
However, is evergreening an abuse of the trade mark system?
Evergreening is in the spotlight at the moment because of the dispute, currently ongoing, between the supermarkets giants Lidl and Tesco which relates to the following mark and sign:
|Lidl’s wordless trade mark||Tesco sign in use in stores|
As can be seen, Lidl is the registered proprietor of a wordless trade mark for a yellow circle, surrounded by a red line, on a blue background. Based on its registered rights, Lidl issued a claim against Tesco for trade mark and copyright infringement and passing off by Tesco as a result of its use of a yellow circle on a blue background for its “Clubcard Prices”.
As part of its defence, Tesco, has counterclaimed for invalidity of Lidl’s trade marks on the grounds of bad faith and evergreening since Lidl has never put the wordless mark into use for over 20 years and has tried to “evergreen” its mark by re-filing the same mark over and over again to refresh the grace period and avoid putting the mark to genuine use.
In a first instance interim decision the High Court rejected Tesco’s allegation of bad faith due to evergreening. However, on appeal, the Court found that Tesco’s argument had a “real prospect of success” and this was allowed to form part of the trial which was heard in February 2023.
The Court’s final decision will be waited enthusiastically as it will provide guidance as to which challenges need to be overcome to show bad faith; whether and in what circumstances evergreening constitutes an abuse of the trade mark system and, in echoes of the Specsavers -v- Asda case, whether use of the Lidl mark with the word Lidl amounts to genuine use of Lidl’s wordless mark.
Watch this space for an update on the decision which also needs to be considered in the context of the hotly anticipated case of Sky -v- Skykick which is due to be heard by the Supreme Court in the summer of 2023 and provide definitive guidance as to what amounts to a bad faith trade mark registration.
If there are genuine commercial reasons to justify the non-use and re-registration, evergreening is not an abuse of trade mark system per se, but there are risks attached to this strategy if not done correctly. The Lidl -v- Tesco case is likely to give guidance as to the precise nature of those risks.
Trade marks are such important assets for businesses that it is vital to see them protected. There are a multitude of strategies to protect those assets, and business owners must know how to exploit those strategies correctly without putting their marks at risk by going too far.
 section 46(1)(a) and (b) of the Trade Mark Act 1994.
  EWCA Civ 24
 2021] EWCA Civ 1121