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Trademark validity: Establishing genuine use

09-11-2017

After the initial ‘grace period’ of five years, EU trademark owners must be able to show that their marks are (‘genuinely’) used for each of the goods and services for which the trademark has been registered. If they cannot, their trademark may be vulnerable to revocation actions. But, what is considered ‘genuine use’ and what if a trademark is used in a different form from which it was registered? Novagraaf’s Frouke Hekker explains.

The ‘genuine use’ requirement
According to the Court of Justice of the European Union (CJEU), a trademark can be considered to fulfil the requirement of genuine use when: facts and circumstances show that it has been used to identify the origin of the goods and/or services outwardly, and in the genuine or real manner for which the trademark has been registered.

This includes use in the relevant economic sector to maintain or create market share for the goods or services protected by the trademark, as per the nature of the relevant goods or services, the characteristics of the market, and the extent and frequency of use of the mark. Use must be ‘actual and sufficient’ and must be demonstrated by solid and objective evidence. Account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period for which the mark was used and the frequency of use.

What if a trademark is used in a different form from which it is registered?
The EU Trade Mark Regulation (EUTMR) states that use of a trademark in a form different from the one registered still constitutes genuine use if the elements that are different do not alter the distinctive character of the trademark. A slight adjustment of (elements of) a figurative trademark, therefore, will generally be acceptable. On the other hand, a complete rebranding of a company’s trademark will most likely require a new registration.

What happens if the use requirement is not met?
A trademark that does not fulfil the conditions of genuine use can be (fully or partially) revoked if it can be shown that it has not been genuinely used within a five-year period for each good or service for which the trademark has been registered. The time period to prove use in a revocation procedure is limited. That means it is very important to continuously document use of the trademark; for example, by recording or storing (dated) packages, labels, price lists, catalogues, invoices, photographs, advertisements in newspapers and other media, and/or other branded content or statements.

Overcoming revocation actions: genuine use of 3D trademarks for biscuit packaging
In recent revocation proceedings, initiated by the British company O2 Holding Ltd, the Spanish company Galletas Gullón had to prove that it had genuinely used its two 3D trademarks for packaging for ‘biscuits’ (class 30), registered in December 2004 and June 2009.

In June 2015 EUIPO’s Cancellation Division decided that the requirement of genuine use was met. However, in May 2016, EUIPO’s Board of Appeal annulled this decision. The Board of Appeal held that, on the one hand, the marks were used in a different form  – because of the addition of a white section on the upper sides of the packages, the other stylisation of the elements 'gúllon', 'O' and '2' and the additional element 'chocolate' in the red packaging – which allegedly alter the distinctiveness of the trademarks. In addition, the Board of Appeal considered that the evidence submitted did not prove that the trademarks were genuinely used because, among other things, sales figures were not significant enough and invoices did not clearly indicate which trademarks the invoices concerned.

The EU General Court disagreed with these findings in its 23 October 2017 decision (see here and here). With regard to the different form of the trademarks, the EU General Court considered the differences to be minor and only decorative, and therefore the distinctiveness was not altered. With regards to the evidence submitted, the EU General Court stated:

  • The use of a sign must not always be quantitatively significant to qualify as genuine;
  • Although the submitted invoices do not indicate high revenues (approximately €2,500 in total for each of the relevant brands, corresponding to sales of approximately 5,800 biscuits packages during a time frame of 3.5 years), it appears that the size of the use was sufficiently widespread to show that the trademarks are used to find and maintain a commercial outlet for the marketed goods;
  • This assessment is supported by the fact that Galletas Gullón has provided numerous press articles and advertisements regarding the marketing of the goods concerned.

The EU General Court concluded therefore that the invoices submitted, together with the other supporting documents, showed sufficient genuine use of the two Galletas Gullón 3D trademarks. The decision of the Board of Appeal has been annulled.

For additional advice on the genuine use requirement, please speak to your Novagraaf consultant or contact us.

Frouke Hekker works in Novagraaf’s Competence Centre. She is based in Amsterdam.