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Case law: Court gives guidance on when trade mark can be revoked for lack of 'genuine use'

Trade mark owners should ensure they are making 'genuine use' of their trade marks, given the nature of their products and business - particularly if they are using them only in preliminary steps prior to launching the product or service - or risk their trade marks being revoked.

Legal Alert

This update was published in Legal Alert - February 2017

Legal Alert is a monthly checklist from Atom Content Marketing highlighting new and pending laws, regulations, codes of practice and rulings that could have an impact on your business.

Trade mark owners will welcome a ruling clarifying what amounts to 'genuine use' of a registered trade mark, as failure to make genuine use of a mark for five years can mean it could be revoked. The burden is on the trade mark owner to prove there has been genuine use.

In this case, a company applied to cancel a rival's European Union trade mark registration on grounds it had not made genuine use of the mark.

The trade mark owner argued that there had been genuine use because the mark had been used while planning the launch of a new clothing range, including at a clothing trade fair where it was seen by various retail professionals.

Initially, the relevant panel ruled that there had not been genuine use. As the launch had not actually taken place the goods had never actually been offered to consumers. This meant the use was not genuine use, but merely ancillary use. Even if the launch had gone ahead, use of the mark on small labels sewn into clothes would not have been noticeable to consumers.

The General Court disagreed:

  • There was no 'end consumer' test that had to be satisfied before there could be genuine use of a trade mark
  • It was not necessary for products bearing the mark to have been launched

It ruled that provided the use that had been made of the mark was warranted as a means of creating or maintaining market share in the relevant sector, it was not necessary for all use of the mark to be directed towards end consumers. It was sufficient if it was directed towards professionals such as specialists or industrial resellers. In this case, there was therefore evidence of genuine use.

Operative date

  • Now

Recommendation

  • Trade mark owners should ensure they are making 'genuine use' of their trade marks, given the nature of their products and business - particularly if they are using them only in preliminary steps prior to launching the product or service - or risk their trade marks being revoked

Case ref: Fruit of the Loom, Inc v EUIPO T-431/15

Disclaimer: This article from Atom Content Marketing is for general guidance only, for businesses in the United Kingdom governed by the laws of England. Atom Content Marketing, expert contributors and ICAEW (as distributor) disclaim all liability for any errors or omissions.