HSBC ‘Hamilton’ mark halted by UK IPO

HSBC has been on the losing end of a battle to keep ‘Hamilton’ UK trade mark alive.

A requirement of a trade mark owner is to ensure their registered trade marks are subject in consistent genuine use.

If a mark is not used for a period of 5 years, it is vunerable to attack and there is a risk the mark will be invalidated.

It is important that a business does not remain in control of a brand that it does not use as this will ultimately prevent business and competition working properly, as well as preventing the growth of new businesses.

HSBC was the latest to be hit with this attack.

In 1992, HSBC registered the mark ‘Hamilton’ in respect of insurance, investment and pension services in the UK.

This mark existed unchallenged until 2011, when Hamilton Insurance contacted HSBC asking them to provide evidence that they were genuinely using the mark ‘Hamilton’ or Hamilton Insurance would file a claim to revoke the mark due to non-use.

HSBC did not respond to this, and let Hamilton Insurance to file a claim for revocation.

In response to this claim, HSBC were required to submit evidence to suggest the mark had been used in the relevant services with the last 5 years.

HSBC coupled their counterstatement which a witness statement from Donald Wood, who is a senior product manager.

He said that the ‘Hamilton’ trademark was being used as a trading name by HFC Bank, part of HSBC, but when HFC bank shut down, the trademark was transferred in 2013 to HSBC.

“Customers of HFC Bank holding certain loan products knew it as ‘Hamilton or ‘Hamilton Direct Bank’,” said the witness statement.

As the only other item of evidence, other than the witness statement, HSBC also provided a letter that had allegedly been sent to customers of HFC Bank, noting that the HFC’s business and accounts were being transferred to HSBC.

Although the letter mentioned loan repayments, it did not mention any of the other services covered under the ‘Hamilton’ trade mark.

This was criticised by Hamilton Insurance who argued that the evidence submitted was not sufficient and if HSBC were genuinely using the mark, there would be ample evidence to file.

The UK Intellectual Property Office who considered the revocation claim, agreed with Hamilton Insurance and revoked HSBC’s trade mark and ordered them to pay £900 in damages.

Let this be a lesson to all, use your trade mark or lose your trade mark!

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