Europe Determines When Use is Use

Author:Mr Jonathan Radcliffe
Profession:Mayer Brown

Originally published October 25, 2011

Keywords: EU general court, guidance, use of trade mark, registration, cancellation actions

Summary and implications

The EU General Court has recently handed down a judgment that for the first time properly lays down hard guidance on what constitutes genuine use of a trade mark in the EU sufficient to keep a registration alive.

This judgment will have a strategically significant effect on the trade mark position across the EU.

The EU will now take a stricter position on genuine use so that the register does not de facto grant an inactive proprietor a legal monopoly for an indeterminate period. The general principle is now that the register must faithfully reflect what companies actually use on the market to distinguish their goods and services in economic life. Trade mark proprietors must make genuine – not token - use of their trade marks to keep them alive, and face losing their monopolies if they do not. Competitors have now been given a real weapon with which to clear the way for their own registrations, and should no longer be subject to trade mark hold-up by what may in practice be no more than a defensive registration backed up by little actual use. As a result cancellation actions will become a significantly more important weapon in the strategic armoury. A premium will now be placed on a proper and sophisticated forensic consideration of evidence in cancellation proceedings. The evidence of use and its defects

It is important to note the precise character and extent of the evidence for genuine use in this case, as this is critical to understanding the boundaries of genuine use established by the EU General Court's decision.

In defending an OHIM cancellation action against its Community word mark CENTROTHERM for non-use, the trade mark proprietor filed the following evidence to demonstrate genuine use; fourteen digital photographs of pallets and boxes of goods; four invoices with the trade mark on the letterhead; and a sworn declaration from its manager.

The OHIM Cancellation Division decision revoked the CENTROTHERM mark on the basis that this evidence was insufficient to demonstrate genuine use of the mark. This had been reversed by the OHIM Board of Appeal on the basis that the photographs demonstrated the nature of the mark's use and that the invoices showed that the goods had been marketed under the mark.

The General Court overturned the Board of Appeal's ruling. The General Court held...

To continue reading