European Union: Use It Or Lose It - What Qualifies As Genuine Use?

Last Updated: 20 December 2016
Article by Richard Burton and Flora Cook

Trade mark proprietors are often faced with the ultimatum 'use it or lose it', but when asked to provide evidence of genuine use of your mark, how far can your actual use stray from the mark as registered?

Article 15(1)(a) of EU Trade Mark Regulations (the Regulation) allows trade mark proprietors to use their marks "in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered" and for such use to support the underlying trade mark registrations. The provision allows trade mark proprietors to modernise their marks and adapt them for different marketing and promotional conditions, as the following General Court (GC) decisions illustrate.

Hyphen GmbH and Skylotec GmbH

Hyphen obtained a trade mark registration for the black and white figurative mark, shown left, in relation to goods and services in classes 3, 5, 9, 24, 25 and 42.

Skylotec filed a non-use revocation action, claiming that hyphen had not made genuine use of their mark over a continuous period of five years. Hyphen produced evidence of use of the mark in the following forms:

At first instance, the Cancellation Division (CD) partially refused the action, finding that hyphen's various uses of the mark (all incorporating a circle device) were sufficient to maintain some of the registration for goods in classes 9, 24 and 25 and services in class 42.

Although hyphen's use was not strictly in the form as registered, the CD held that the additional circle element was not distinctive and therefore did not alter the distinctive character of the registered mark.

Skylotec appealed to the Board of Appeal (BoA) and the registration was revoked in its entirety. The BoA stated that the assessment as to whether hyphen's use was sufficient to support its registration revolved around the distinctive character of the mark as registered, rather than the distinctive character of the addition (the circle). The BoA likened the registered mark to a dumbbell or dog bone, whereas the forms used were akin to a button. As a result, the BoA held that the overall impression of the registered mark was eclipsed by the additional circle element such that the variant forms could not support the registration. Hyphen appealed to the GC claiming the BoA had failed to take proper account of the provision under Article 15(1)(a).

T-146/15 GC judgment

The GC annulled the BoA decision: earlier case law made it clear that it was necessary to analyse the distinctive or dominant character of the added elements when assessing whether use in a form differing from the mark as registered was sufficient. The BoA had made a "random and necessarily inaccurate comparison"' in finding that the forms used resembled a button rather than a dumbbell or bone. The GC reiterated the CD's assessment, that the added component (a circle) was a simple geometric shape devoid of distinctive character which did not alter the distinctive character of the registered mark.

Overall, the GC found that: marks No.1 and No. 2 were equivalent to the mark as registered; mark No. 2, in sky blue, was held not to be particularly original, so did not significantly alter the mark as registered; and whilst mark No. 3 comprised of (i) the registered mark (ii) the circle (iii) stylised words elements "hyphen c", taking account of the relevant sector (the clothing sector), it was not unusual to juxtapose figurative elements with word elements linked to the designer/manufacturer in question. In other words, the registered mark retained its distinctive character whether surrounded by a circle or not.

T-204/14 Victor International GmbH v EUIPO

Gregorio Ovejero Jiménez and María Luisa Cristina Becerra Guibert (the opponents) opposed an application for the trade mark VICTOR on the basis of a number of Spanish marks including the more relevant figurative mark VICTORIA (shown below) for a range of goods in class 25:

The applicant requested evidence of use and the opponents produced various documents including invoices, catalogues, delivery notes and advertisements. The mark was used in various forms as follows:

The Opposition Division and later the Board of Appeal found use in relation to "footwear (except orthopaedic)" in Spain and considered there to be a likelihood of confusion, upholding the opposition.

The applicant filed an appeal to the GC challenging the nature of the use of the earlier mark and the evidence submitted. In particular, the applicant argued that the mark was not used in the form in which it was registered and that the additional figurative elements and colours altered its distinctive character. It argued that the mark was weak given that "victoria" is allegedly commonly used as a trade mark in the clothing, footwear and accessories sector.

Use of a mark which does not alter the distinctive character of a registration

In relation to the evidence submitted, the GC reiterated that in order to examine whether the use of an earlier mark is genuine, an overall assessment must be made, taking into account all the relevant factors.

With regard to Article 15(1) of the Regulation and Article 42(2) and (3), proof of genuine use of an earlier national or EU trade mark which forms the basis of an opposition to an EU trade mark application also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered.

In such situations, where the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the above-mentioned provision envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade.

The GC found that the use of the additional figurative and word elements was of decorative nature only and that the word "victoria" was not weak in terms of distinctive character. The GC found that a common forename can serve as a trade mark if it is capable of distinguishing the origin of goods and services.

In dismissing the applicant's appeal, the GC rejected its argument that the distinctive character of the word 'victoria' is weakened by the fact that, it is commonly used as a trade mark in the clothing sector and for footwear in the territory of Spain.

In short

The purpose of Article 15(1) of the Regulation, according to the court, is to avoid imposing strict conformity between the form of the trade mark used and the form in which the mark was registered, and to allow its proprietor to make certain variations to the mark which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned.

Both cases serve as a welcome reminder that evidence showing use of variations of the mark as registered can still support a trade mark registration. However, it is worth bearing in mind that any additions, or deletions, should not alter the distinctive character of the mark as registered.

Case details at a glance

  • Jurisdiction: European Union
  • Decision level: General Court
  • Parties: hyphen GmbH (applicant) v EUIPO (defendant); Skylotec GmbH (intervener)
  • Citation: T-146/15
  • Date: 13 September 2016
  • Full decision: http://dycip.com/t-14615
  • Jurisdiction: European Union
  • Decision level: General Court
  • Parties: Victor International GmbH (applicant)
  • v EUIPO (defendant); Gregorio Ovejero Jiménez and María Luisa Cristina Becerra Guibert (interveners)
  • Citation: T-204/14
  • Date: 07 September 2016
  • Full decision: http://dycip.com/t-20414

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Marks & Clerk
Marks & Clerk
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Marks & Clerk
Marks & Clerk
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions