General Court provides helpful overview of concept of genuine use

European Union

The recent General Court discussion in Now Wireless Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-278/13) concerned the revocation of a trademark based on grounds of lack of genuine use. This formed one of many battles between these parties over the use of the mark NOW in the media telecommunications industry.

By way of background in this specific action, in March 2004 Starbucks (HK) Ltd was granted a Community trademark registration (CTM 1421700) for the figurative mark below, in Classes 35, 41 and 42 of the Nice Classification (having applied in 1999).

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In April 2010 Now Wireless Ltd filed an application for revocation of the mark, based on a single plea under Article 51(1)(a) and/or Article 51(2) of the Community Trademark Regulation (207/2009), concerning the lack of genuine use of the mark.

The Cancellation Division revoked the mark in relation to Classes 35 and 41 only, but upheld the mark in respect of Class 42 services, being “information provided online from a computer database or from the Internet; installation and maintenance of computer software; provision of access to the Internet; provision of Internet services; provision of access to sites on an electronic information network; provision of access to various databases; hiring, rental and leasing of computer programs, computer terminals, modems, computer peripherals, any other Internet devices”. Now filed an appeal in relation to the validity of the Class 42 services, which was subsequently dismissed by the Second Board of Appeal. That decision was then appealed to the General Court.

In summary, Now’s arguments alleged that:

(i) use of the contested mark had not been demonstrated for the services concerned;

(ii) the Board of Appeal had incorrectly assessed the use of such services in that it did not subdivide them precisely and narrowly;

(iii) the Board of Appeal had wrongly inferred that consent had been granted for use of the contested mark beyond that explicitly granted by a licence;

(iv) the Board of Appeal had incorrectly assessed the extent of the genuine use.

In relation to (i), the General Court considered that sufficient evidence had been submitted by the trademark owner to demonstrate genuine use.

In relation to (ii), if a trademark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories, proof of genuine use is required for each sub-category in order to avoid revocation. However, those sub-categories which are essentially the same as those which are supported by evidence of genuine use are also protected. Further, categories of goods should not be divided up in an arbitrary manner as it is recognised that it is impossible for the proprietor of a trademark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration.

In relation to (iii), it was confirmed that all use by a licensee is relevant when assessing genuine use (even where the licence itself only expressly consents to a certain narrow use by the licensee).

Part (iv) concerned the assessment of evidence of genuine use, and provided a reminder of the case law. In particular, the decision discusses that the requirement of genuine use is not intended to assess the “commercial success” of the trademark in question but, rather, whether the trademark has been used so as to guarantee the identity of the origin of the goods/services. Whilst token or minimal use is excluded, the concept of genuine use is not intended to be fulfilled only where “large-scale commercial use” has been enjoyed. Further, it is accepted that for the assessment of “genuine use in the European Union”, territorial borders of member states should be ignored. In this case, there was proven use in and around London and the Thames Valley area – this was held to be sufficient. Interestingly, the argument by Now that providing information online via the Interest should ordinarily presuppose a wide geographic area was “not supported by probative evidence”.

In conclusion, whilst the appeal was again unsuccessful, this decision serves as a helpful overview of the concept of genuine use, together with its application in relation to scope, and particularly its applicability in the context of licences and the need to support the argument that particular goods or services should be provided over a large geographic area. One wonders how this trademark would fare in the UK courts (even if just for Class 42 services) given the Court of Appeal’s decision that a clearly similar mark for services in Classes 38 and 41 was invalid for descriptiveness.

Verity Ellis, D Young & Co LLP, London

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