EUROPEAN UNION: General Court Decides Place of Use Is Relevant When Assessing Genuine Use

Nov 15 2022 - 19:47

In Standard International Management LLC v. European Union Intellectual Property Office (EUIPO), Case T-768/20, dated July 13, 2022, the General Court (GC) annulled the decision of the EUIPO Board of Appeal (BoA), which upheld the Cancellation Division’s decision to revoke a trademark registration on non-use grounds.

The GC found that the BoA erred in finding that the contested mark could not be put to genuine use in the EU, because the applicant’s hotel and ancillary services were provided in the United States, outside the territory of the EU, even though the applicant targeted consumers in the EU. In essence, the BoA confused the place of provision of services with the place of use of the mark. The GC stated that even if the applicant were to supply goods or services outside the EU, it is conceivable that the applicant would use that mark to create or preserve an outlet for those goods and services in the EU. The GC cited the EUIPO Guidelines, which say that where the goods or services covered by a contested mark are provided abroad, such as holiday accommodation or particular products, advertising alone may be sufficient to amount to genuine use.

The GC also addressed the BoA’s argument that since the contested mark was not registered for “advertising,” “booking,” “travel agency,” or “sale[s]” services, its proprietor could not use evidence referring to advertisements or to offers for sale. The GC explained that advertisements and offers for sale constitute acts of use of a trademark. Hence, those acts are relevant to demonstrate use for the services for which the mark is registered, where those services or goods are the subject of advertisements and offers for sale.

Thus, the GC annulled the BoA’s decision based on the BoA’s mistaken finding that services provided in the United States, which targeted consumers in the EU, did not constitute relevant evidence to demonstrate the use of the mark in the EU. The court referred the case back to the EUIPO for further examination of the evidence of use submitted by the proprietor.

By Marina Maltykh, Associate, PETOŠEVIĆ Ukraine

This article first appeared in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA).

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