BBC has rival ‘Davros’ TM revoked

The British Broadcasting Corporation (BBC) has succeeded in having a trademark purporting to cover a character from its hit television series “Doctor Who” revoked for non-use at the UK Intellectual Property Office (UKIPO).

The UKIPO decision, issued Thursday, June 13, brings to an end a long-standing dispute between the BBC and Steven Clark, who claimed to have drawn a character bearing similarity to the BBC’s for a comic book competition in 1972.

According to the BBC, however, its “Davros” character, which first appeared in “Doctor Who” in 1975,  was designed independently by one of its own visual effects designers on the basis of the original 1960s scripts for the show.

According to the decision, a dispute between the parties arose in the 1990s, which led to Clark applying to register his drawing of “Davros” as a trademark in 2008.

The mark, which was registered in 2009 and renewed in 2018, covered 9, 16, 25, 38 and 41, including goods and services such as broadcasting and provision of entertainment.

In 2018, the BBC applied to have the mark revoked on the grounds that there had been no genuine use in either the five year period after it was initially registered, or before it was renewed.

Clark issued copyright infringement proceedings against the BBC in the English High Court in 2012, “presumably in the drawn component of the contested registered trademark,” the UKIPO decision said.

The UKIPO cited a 2012 High Court order which stipulated that Clark assign the mark to the BBC’s ownership.

Although Clark did not assign the mark to the BBC, the media corporation said that it had decided to take the “the ‘pragmatic’ decision to allow the contested registration to lapse on renewal”.

The BBC calculated that Clark was unlikely to “spend money on renewing a trademark registration which he was under an order to assign,” the UKIPO decision said.

Upon Clark’s renewal of the registration in 2018, however, the BBC brought the cancellation proceedings before the UKIPO, arguing that there had been no genuine use of the mark.

According to Clark, there were proper reasons for non-use, namely that he could not make use of the mark while embroiled in the dispute with the BBC.

“For good reason I could not use/transfer/sell/assigned/licence the trademark while in legal dispute with the BBC and they know and are fully aware of that,” Clark told the UKIPO.

The UKIPO, however, cited EU case law in determining that “litigation was not necessarily a proper reason for non-use”.

In its decision, the UKIPO said that Clark had provided no evidence of what his use of the mark was during the normal course of business with respect to the relevant goods and services. The office also referred to the 2012 High Court order which stated that Clark had no rights to the mark.

“It would be perverse to find that a dispute, which resulted in such a court order, is a proper reason for non-use of the registered trademark; and perverse in the extreme to find that the contents of the Order constituted proper reasons for non-use,” the UKIPO said.

The UKIPO awarded costs of £1200 to the BBC.