The General Court (GC) has confirmed that there is no 'end
consumer' test for assessing genuine use, nor a need to have
physically launched products in the marketplace.
Proving use of a registered trade mark can often be difficult
and onerous; however, the recent GC decision in Fruit of the Loom,
Inc v EUIPO provides helpful guidance in determining whether use is
genuine if it has not been made to the end consumer.
Background to Fruit of the Loom, Inc v EUIPO
Fruit of the Loom, Inc own a European Union Trade Mark (EUTM)
for FRUIT in respect of 'clothing, footwear, headgear'.
Takko Holding GmbH applied to cancel the registration on the
grounds of non-use. Fruit of the Loom submitted evidence which
included use of the word FRUIT as a stand alone element in
preparatory works for the launch of a new clothing range, along
with evidence that professionals within the retail sector had seen
these preparatory works.
The Cancellation Division and Board of Appeal of the European
Union Intellectual Property Office (EUIPO) both revoked the
registration holding that the evidence submitted did not show
genuine use of the FRUIT registration. In particular, it was held
that use of FRUIT in preparatory works for the new clothing range
only showed use of the registration in an ancillary way, and use of
the word FRUIT on small labels stitched onto garments would not be
noticed by consumers. It was further held that Fruit of the Loom
had not actually offered the goods in question to end consumers
because the new clothing range was never launched. Therefore, the
use that had been made of the registration could not be considered
The GC annulled the earlier decisions confirming that it is
essential to consider whether the use that has occurred is
warranted in the relevant sector as a means of creating or
maintaining market share. However, there is no requirement that all
use of the trade mark be directed towards end consumers. The
relevant public includes not only end consumers but also
specialists, industrial customers and other professional users. In
the retail sector, it is common to direct commercial acts towards
professionals in the retail sector and particularly at resellers.
Therefore, use of a trade mark directed at professionals within the
retail sector may be genuine.
The Court of Justice of the European Union has previously held
that preparations to market a product can constitute genuine use;
therefore, participation in trade fairs or other advertising of a
trade mark are acts capable of showing that genuine use of a trade
mark has been made.
In this case, the GC held that evidence showing Fruit of the
Loom had attended a trade fair to market clothing items bearing the
FRUIT trade mark registration could be deemed genuine.
The fact that the clothing range never launched was irrelevant
to the question of whether the use that had occurred could be
considered genuine. According to the GC "marketing activities
invoked to establish genuine use of a mark are capable, at the time
they are undertaken...of creating an outlet for the goods or
services concerned, [and] subsequent circumstances may, in
principle, not be taken into account when assessing whether there
has been genuine use of that mark" (paragraph 58 refers). In
conclusion, the GC ruled that a decision not to launch a product
for strategic or economic reasons is not in itself, a decisive
factor in determining the question of genuine use.
The marketing of products to professionals within the relevant
market sector may be taken into account in assessing whether
genuine use of a trade mark has been made.
The question of genuine use must take into account all relevant
factors for the market in question;
Preparations to use a trade mark may show genuine use, if the
use that occurs guarantees the identity of the origin of the goods,
even if such use is not made to end consumers, and there is a
decision which ultimately stops the products from being launched
into the marketplace.
The focus on the product being obvious or anticipated as at a certain date provides powerful protection and commercial certainty without conflicting with a patentee's ability to obtain patent protection.
The High Court considered a claim by Azumi, the owner of high-end Japanese restaurant Zuma against Zuma's Choice Pet Products Limited (ZCPP) and its director Zoe Vanderbilt for trade mark infringement.
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