Genuine use of a Community trade mark

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In order to remain valid and capable of enforcement against third parties a Community trade mark must be put to genuine use by the trade mark proprietor (or with its consent) in the European Community. Three recent decisions have considered the question of proving genuine use but arguably we are none the wiser following these decisions.

In the first case, [1] the General Court allowed an appeal against a decision of the Opposition Division to allow an opposition to the registration of a figurative mark on the basis of prior UK and Community trade marks.

On genuine use, the General Court stated that there was no requirement for use to be proved in each of the five years in respect of which genuine use was assessed under the revocation and opposition procedures. The goods in question were high-end cars in a market that was characterised by relatively low demand, but it was clear from articles published on the internet and catalogues that the cars had been marketed in the UK during the relevant five-year period. When considering genuine use, it was not the role of the court to assess commercial success, review the economic strategy of an undertaking, or restrict trade mark protection to large-scale commercial use.

The second case [2] concerned a figurative Community trade mark for insulating materials. In this case, the applicant for revocation argued that the evidence relied on to show genuine use was insufficient as some of the evidence did not individually contain information with regard to all the relevant aspects of the contested marks (e.g. date and volume of sales, nature of the goods sold). Rejecting that submission, the General Court said that the evidence had to be considered in its entirety – it was the accumulation of evidence that mattered and that fact that some of the advertising material and invoices did not deal with all the relevant aspects was immaterial.

Neither General Court decision is particularly surprising. The third decision, of the UK Intellectual Property Office (UK IPO), is less straightforward. [3] This case concerned Nike’s famous JUMPMAN trade mark, registration of which had been unsuccessfully opposed by Intermar Simanto Nahmias, a Spanish company and the proprietor of a Community trade mark JUMP. The UK IPO dismissed Intermar’s opposition on the ground that it had not demonstrated genuine use of the JUMP trade mark in the EU.

Intermar had sold 55,000 pairs of footwear bearing its JUMP mark to a Bulgaria-based customer during the last 16 months of the relevant five-year period for assessing genuine use of the mark, with sales totalling US $476,000. The Bulgarian customer had in turn sold 170 pairs of the footwear to a Romanian company within that five-year period. The UK IPO did not consider that this was sufficient to prove genuine commercial use of the mark in the European Community.

This decision is under appeal and hopefully the appeal decision will add some clarity as most observers would perhaps have expected a finding that Intermar had proved genuine use. In particular, where guidance appears to be needed sooner rather than later is on the extent to which there needs to be use beyond just one Member State.


[1] Case T-398/13, TVR Automotive Ltd v OHIM
[2] Case T-215/13, Deutsche Rockwool Mineralwoll GmbH & Co OHG v OHIM