Genuine use of a trade mark

Overview of genuine use

• In order to avoid cancellation proceedings, a proprietor of a mark is required to "use" it for the goods/services for which it is registered.
• A CTM will be put to genuine use when it is used in accordance with its essential function and for the purpose of maintaining or creating a market share within the EU (see Onel).
• In Onel, the Court of Justice of the European Union (CJ) held that for the purposes of CTMs, territorial borders are to be disregarded.
• However, national courts and local trade mark registries (including the Intellectual Property Enterprise Court of England & Wales in the recent Sofa Works decision) have ruled that use in just one country in the EU may not be sufficient to constitute genuine use in their cases.

TVR Italia v Muadib Beteiligung

The background facts of this case are somewhat complex but in brief: TVR Italia (TVR) filed a Community trade mark (CTM) application, which was opposed by Muadib Beteiligung (MB) on the basis of its earlier trade mark rights. The opposition was partially upheld (in relation to some goods) and partially rejected.

TVR appealed and filed separate revocation proceedings against MB's earlier marks. The revocation application failed, as it was found that MB had provided sufficient proof of use.

However, the Board of Appeal then dismissed the opposition on the grounds of non-use of MB's earlier CTM (the relevant dates that were being assessed for non-use in both proceedings were not entirely the same, although there was some overlap).

Following this, TVR Automotive acquired MB's earlier marks. TVR Automotive filed an appeal to the GC.

Finding of the GC

The court came to the following conclusions:

• A decision by the cancellation division on revocation was not definitive due to the facts of this case (as the time period for non-use being assessed in the opposition and revocation proceedings was not entirely identical); and the principle that prohibits a final judicial decision being called into question was not applicable as far as it concerns the relationship between a final decision in OHIM opposition proceedings/revocation proceedings, as proceedings at OHIM are administrative and not judicial.
• Whether a mark is deemed to have been put to genuine use will depend on the characteristics of the goods/services concerned on the corresponding market, and not all proven commercial exploitation can therefore automatically be deemed genuine use.
• Account must be taken of the commercial volume of all the acts of use, on the one hand, and the duration of the period in which those acts of use occurred, and the frequency of those acts, on the other.
• The sector in which the mark is being used can be of relevance.
• There was no requirement to prove use in each of the relevant five years, instead substantial use in the five year period was deemed to be sufficient.

In short

This case provides further insight from the courts regarding what will constitute genuine use. It will be a comfort to trade mark proprietors that they are not necessarily required to show continuous use for the relevant five year period, as this is often not the way trade marks are used on a practical, commercial, level.

While it is always helpful to have as much judicial guidance as possible on what is ultimately an unclear area, the court has again noted that the individual facts of each case must be taken into account when reaching a conclusion.

Case details at a glance

Jurisdiction: European Union
Decision level: General Court of the European Union
Parties: TVR Automotive Ltd v OHIM, TVR Italia Srl
Citation: T-398/13
Date: 15 July 2015
Full decision: http://dycip.com/T-39813
Related articles: "One is a lonely country - EU territorial borders not necessarily overlooked in assessment of genuine use": www.dyoung.com/article-sofagenuineuse and "Court of Justice Decision on Genuine Use of a CTM in the Community in ONEL v OMEL": www.dyoung.com/article-onelvomel1212