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Yоur client Mоutоn Lа Grаnge SA (а multinational company based in France) has approached you to help with 2 new issues that it has been considering in-house without success. You need to respond to both parts: Part 1 Firstly, it has received a letter from a Japanese company (Western Ices Kabushiki Kaisha) regarding the trade mark FREEZOS which belongs to one of Mouton La Grange SA’s subsidiaries. Last year Mouton La Grange acquired the UK company Freezos Limited which owned a UK trade mark registration for the mark FREEZOS and an accompanying International Registration (based upon the UK registration) designating the USA, Japan, EU, New Zealand and Australia. The relevant details of the rights acquired are as follows: UK Trade Mark Registration no 3657890 International Registration no IR198650 Mark: FREEZOS Application date: 19 September 2019 Registration date: 20 February 2020 Specification: Class 21: Tableware, cookware and containers; insulated Flasks; insulated mugs; vacuum bottles Class 30: Ice cream; ices; sorbets Mark: FREEZOS Application date: 17 August 2021 Registration date: 1 January 2022 Specification: Class 21: Tableware, cookware and containers; insulated Flasks; insulated mugs; vacuum bottles Class 30: Ice cream; ices; sorbets Following the acquisition of Freezos Limited, Mouton La Grange SA renamed the UK company Mouton La Grange (UK) Limited and this now operates as a UK subsidiary of the French head company Mouton La Grange SA. Western Ices Kabushiki Kaisha explains in its letter that it has applied to register the mark FREEZIES in Japan in respect of “frozen desserts; ice creams” and will be making further applications outside Japan within the priority deadline. The Japanese Trade Mark Office has identified Mouton La Grange’s trade mark as a block to registrability, and Western Ices is requesting consent to registration of its FREEZIES mark. It is suggesting that if it does not obtain consent it will apply to cancel the FREEZOS registration in Japan and elsewhere on the basis of non-use, including the UK, but that its interests do not extend outside of frozen desserts and ice creams. Mouton La Grange explains that it (and Freezos Limited before it) has not used the FREEZOS mark beyond insulated flasks for cold items in any country. Your research has confirmed that the relevant period for non-use in Japan is 3 years from registration, whilst it is 5 years from registration in the UK. In each jurisdiction, it is clear from your research that the cancellation actions on the basis of non-use could not be overcome for the goods in class 30 or most of the goods in class 21, and that the result of Western Ices Kabushiki Kaisha pursuing cancellation would be to leave the client with only “insulated flasks” in class 21. The client has indicated that it would prefer to leave its options open to use the FREEZOS mark for ice cream and sorbets in the future (as another part of the business produces ice creams) but that the key interest is keeping its registrations for all of the goods in class 21. With that in mind it has asked you the following: If Western Ices Kabushiki Kaisha successfully pursued cancellation of the FREEZOS registrations as noted above, what is the overall worst case scenario in terms of consequences for the client’s trade mark portfolio? (You do not need to provide any advice on the specifics of the proposed cancellation actions, and no points shall be awarded for this.) If consent is not given, is there anything which could be done to prevent the outcome identified at question 1? Given those consequences, do you recommend the client provide consent? Please explain the rationale for your answer; you do not need to provide any advice on any proposed terms of giving consent and no points shall be awarded for this. Part 2 Mouton La Grange SA is considering a new filing programme for its proposed mark MLG covering: Class 29: “meat-based snack foods; snack foods based on vegetables” Class 30: “Grain based snack foods; snack foods made from cereals” It has not commenced using the MLG mark yet, but is committed to it and wishes to protect the mark in the following jurisdictions: UK, EU (but really only interested in France, Germany, Spain, Portugal, Ireland, Denmark, Sweden and Italy), USA, New Zealand, Australia It has undertaken brief research and found that there are national trade mark registrations in the Benelux and the USA for the mark MLB covering “Grain-based snack foods, namely flapjacks and granola bars”, both owned by Major League Baseball Properties Inc and registered within the last 2 years. In the past it has had difficulties protecting the specification of goods listed above in the USA, with the USPTO seeking more details as to the goods to be protected. It intends for Mouton La Grange SA to own the trade mark rather than its UK subsidiary Mouton La Grange (UK) Limited, and is contemplating options for protection. It therefore asks the following: Please could you explain the options for protecting the mark in these countries, identifying any benefits or issues with the different options and making a suggestion as to how to protect the mark in the countries of interest Does having the UK subsidiary have any impact on the protection options for Mouton La Grange SA? If so, is this helpful in this case? If Major League Baseball Properties Inc files opposition to any EUTM application by the client based upon its Benelux national registration and succeeds, what will be the effect of that and is there anything which can be done at the intellectual property offices designated under the IR to reduce the impact of that outcome?