In the recent revocation decision against the UK trade mark registration for HOT LIPS in class 3, the UKIPO has decided to keep the trade mark registration for HOT LIPS on the Register, even though the genuine use of the mark was only evidenced in relation to lip balms and lip gloss. Originally the application was filed in class 3 for a more broader term “Non-medicated toilet preparations and cosmetic preparations, all for application to the lips; lipsticks; all included in Class 3”.
The UKIPO has relied on the below points of Mundipharma AG v OHIM case.
On that basis the UKIPO found it appropriate to restrict the application instead of revoking the registration completely. What this shows is that when evidence of use is required for a broad specification, evidence may not be required for every possible variation included in the term. However the UKIPO might amend the specification to reflect the actual use of the mark as shown in the evidence provided.
vii) In some cases, it may be possible to identify subcategories of goods or services within a general term which are capable of being viewed independently. In such cases, use in relation to only one subcategory will not constitute use in relation to all other subcategories. On the other hand, protection must not be cut down to those precise goods or services in relation to which the mark has been used. This would be to strip the proprietor of protection for all goods or services which the average consumer would consider to belong to the same group or category as those for which the mark has been used and which are not in substance different from them; Mundipharma AG v OHIM (Case T-256/04) ECR II-449; EU:T:2007:46.