European trademarks and the question of genuine use

In some cases, national registrations may be preferable to European trademark (EUTM) registrations explains Novagraaf’s Florence Chapin.

Many companies will opt to register EUTMs instead of national trademarks. This is sound business practice if, for example, you manufacture, sell or export your goods or services in several countries in the EU (or plan to do so). If this European presence fails to materialise, however, you may find your marks liable for revocation for non-use.

Registered EUTMs can be at risk of revocation actions on the basis of non-use (after the five-year grace period has expired), even when the mark is actually in substantial use in one EU member state.

Indeed, the question of what constitutes ‘genuine use’ of an EUTM, in particular in terms of territorial requirements, is one that is frequently asked at European level. Is use required throughout the EU, for example; or, is proof of use of the mark in one market sufficient?

It’s a topic on with the Court of Justice of the European Union (CJEU) and the EU’s Court of First Instance of the EU have had the opportunity to consider several times. In particular, with the ‘ONEL/OMEL’ case, which established that, depending on the facts at issue, genuine use could be established on the basis of a single member state and information showing gradual expansion into other territories. In fact, according to that decision: ‘the territorial borders of the member states should be disregarded in the assessment of “genuine use in the Community” within the meaning of Article 15(1) of Regulation No 207/2009’. As other rulings have shown, however, use in one country in the European Union is not generally enough to prove use of an EUTM registration (see Sofa Workshop for instance).

In search of clarity

Of course, territorial extent is only one of several factors to be taken into account in assessing genuine use. For example, how extensive does that use need to be? A small volume of products marketed under a brand may, for instance, be offset by a high consistency over time of the use of this brand, and vice versa. In this regard, several important decisions have qualified the required use of trademarks, including:

• Fruitfuls (August Storck KG v EUIPO), as used for hard fruit candies, sold in Slovenia and produced in Germany;
• YOO (Europa Möbel-Verbund GmbH & Co. KG / Yoo Holdings Limited), designating furniture for use in the UK;
• NOW  (Now Wireless Ltd / Starbucks (HK) Ltd), designating high-speed wireless services in the territory of the City of London and the Thames Valley, UK: and
• LIBERO (Maykamp Kräuterspezialitäten GmbH / Caves Campelos), designating alcoholic and non-alcoholic beverages for use in Germany - EUIPO No. B 2155979 of 04/04/2014

A recent decision of the EU Court on 6 October 2017 (T-386/16) has questioned these ’gains’, however, by ruling that a holder of an EUTM cannot escape revocation on the grounds of non-use by providing proof of use in only one member state (in this case, Italy) where the relevant goods/market do not justify a restriction of use to just that one member state. The trademark in issue in this case was the SILENTE PORTE & PORTE mark designating doors that were ruled to be basic items that could be used by all consumers in the EU. Thus, the territorial requirement for proof of use was not considered satisfied and the mark was revoked.

What does it mean for your trademark registration strategy?

Given this recent ruling and ongoing uncertainty in this area, EUTM owners would be advised to review their existing registrations and current applications to ensure that they meet the criteria of use. If in doubt, it is always advisable to supplement the registrations with national rights in key territories, such as the UK or to consider a different filing strategy that meets the expectations of market expansion and can be adapted to changes in the geographical use of the mark. It also makes sense to keep a record of use should you feel your rights may be at threat, as this could provide crucial proof of use evidence in any revocation action.

When reviewing your current portfolio, keep in mind the following:

• Genuine use of an EUTM will depend both on its geographical extent and also on the specificities of the market for which it is registered;
• Regular evidence of commercial use of the mark will be required to prove such use;
• With particular regard to EUTMs, it’s also important to note that EUIPO's assessment of proof of use is rather onerous. EUTM holders will need to provide evidence of ‘place, time, extent and nature of use’ for the mark in question, including the production of supporting documents, such as packaging, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and so on.

Florence Chapin is a Trademark Attorney at Novagraaf in Bordeaux