With decision of May 8, 2023, the EUIPO Cancellation Division provided relevant clarification concerning the use of a trademark in relation to specific registered goods.

Facts of the proceedings

In April 2022, an application for revocation for non-use  pursuant to Article 58(1)(a) EUTMR was filed against the International Registration designating the European Union “K-WAY” owned by K-Way S.p.A. The application concerned all the goods claimed by the trademark in classes 9, 18, 25 and 28, partly related to the core business of the well-known fashion company K-Way.

In order to prove the use of its trademark, the owner filed large documentation including invoices, catalogues, advertising materials, press release and social media contents.

The decision of the EUIPO

In its examination of the documentation submitted by the trademark owner, the EUIPO confirmed that the evidence was sufficient for the requirements of time of use, place of use, nature of use (use as a trademark and use of the mark as registered) and extent of use.

However, in assessing the requirement of use in relation to the registered goods, the EUIPO considered that the evidence showed use of the mark only for specific registered goods.

More specifically, the EUIPO carried out detailed examination of the documentation provided by the owner for each of the registered goods. Indeed, the EUIPO made a precise differentiation between the goods, accurately outlining the limits of the evidence of use.

As a result, the EUIPO acknowledged that:

  • evidence of use in class 9 for “goggles, namely ski goggles” did not cover additional goods claimed by the mark, such as “optical apparatus and instruments, namely eye glasses, spectacles, lens and frames for spectacles, parts and fitting for all the aforesaid goods; goggles (except ski goggles)”;
  • evidence of use in class 18 for several goods, such as luggage, handbags, wallets, purses, did not cover the additional goods claimed by the mark “trunks; briefcases; umbrellas and parasols”;
  • evidence of use in class 25 for “articles of clothing, namely swimwear, jerseys, pants, trousers, shorts, jackets, wind jackets, coats, overcoats, raincoats, sweaters, cardigans, fleece and polar fleece tops and bottoms, training and track suits, shirts, woven shirts, sweat shirts, polo shirts, t-shirts, tops, dresses, skirts, head bands, scarves; gloves, hats, caps, belts; shoes, boots, sandals, sport and athletic shoes”   did not cover the additional articles of clothing claimed by the mark (i.e. “underwear, sports uniforms, jeans, overalls, hosiery, tank tops, cut and sew tops, gowns, socks, robes, neck bands, ties; chaps, slippers”);
  • evidence of use in class 28 for skis  did not cover the additional goods claimed by the mark such as “ice skates; ski racquets, snow boards”.

Based on the above, the EUIPO partially upheld the application for revocation, thus confirming that the scope of proof of use on certain products cannot be extended to cover goods that, although similar, are not strictly covered by the evidence.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.