A great selling point of the EU trade mark system is that it offers a unitary registration across all EU member states. This also creates one of its trickiest pitfalls: what to do if your mark is not very inherently distinctive.

If the EU IPO finds that your trade mark is “devoid of distinctive character”, and assuming legal arguments are unsuccessful, the remaining option to secure registration is to submit evidence that the mark has acquired distinctiveness in the eyes of the relevant public, i.e. that they recognise it as your trade mark, because of extensive use in trade. Where is the pitfall here? That recognition has to be across the entirety of the EU – just one or two markets will not suffice.

Some brave trade mark owners will take this challenge on. Two recent cases before the General Court gave some helpful guidance on what type of evidence will count as “use”.

Standard International Management LLC operates the chain of “The Standard” Hotels (something of a misnomer, as “The Standard” is at the boutique end of the market). Their hotels are mainly in the US and Asia, with at the time of writing just one in the EU, in Ibiza. They had submitted evidence of promotion and advertising in the EU, which the General Court confirmed should count as “use” - the takeaway message being: a mark can be “used” in the EU via advertising, even if the actual provision of the applicant's core service is elsewhere.

Louis Vuitton have also been before the General Court in respect of their application to register their Chequerboard Pattern. The GC acknowledged a couple of commercial realities. Online and virtual use, which is no respecter of national borders, should be acknowledged as having an influence on customers. The GC also noted that public recognition of a luxury brand is not necessarily in proportion to sales – people may easily recognise a Louis Vuitton accessory without having the budget to buy one for themselves.

These pragmatic comments are helpful when we gather evidence to support registration. The primary place of use of a trade mark might be outside the EU, or in the metaverse. That in itself isn't a fatal flaw. Enormous sales figures are not necessarily needed, depending on what the product is. But there is no escaping the fundamental requirement that there must still be a significant extent of use of the trade mark. Are you making a sustained effort to create a market share across the EU? Just because a website is available in a particular EU member state, doesn't mean people are actually looking at it. This type of evidence has to be supported with website traffic statistics to show that a significant part of the relevant public across the EU would be exposed to the trade mark. This is something worth thinking about if you've been advised your trade mark could be difficult to register. Gathering and keeping website statistics will give a useful factual starting point for considering whether an EU trade mark application – possibly entailing more than one appeal – is likely to succeed. And of course, if your evidence isn't looking too strong, a qualified trade mark attorney can advise you on the best alternative options to protect your branding.

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