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Genuine use: Are sales to end consumers necessary?

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 genuine.

GC judgment

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.

In short

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.

Case details at a glance

Jurisdiction: European Union
Decision level: General Court
Parties: Fruit of the Loom, Inc v EUIPO
Citation: T-431/15
Date: 07 July 2016
Full decision: http://dycip.com/t-43115