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April 18, 2016

Important decision from The European General Court (GC)

The European General Court (GC) has recently delivered a judgment in the case T-924/14, Bice International Ltd. v OHIM (now EUIPO). In its judgment, the GC established i.a. that a very limited geographical use of a national trademark in conjunction with a limited extent of use of such trademark may not be sufficient to prove that genuine use of a national trademark has occurred.

In the case before the GC, the owner of a national Spanish trademark registration had challenged a later EU trademark by lodging an application for invalidity before the OHIM (now EUIPO), alleging that there was a risk of confusion with its prior Spanish trademark. The trademark on which the request for invalidity was based was used in connection with restaurant services provided exclusively through a single restaurant in Madrid. Besides the limited geographical use of the trademark, the applicant for invalidity (owner of the Spanish trademark) provided limited evidence of use of such trademark in the form of i.a. a statutory declaration and invoices showing a relatively low turnover. The OHIM (now EUIPO) found that such evidence was insufficient to show genuine use of the Spanish trademark, and the claims of the applicant for invalidity were rejected. The decision was confirmed first by the BoA and then by the GC.

This case shows that it might be difficult to enforce (and perhaps even maintain) trademark rights if the use of such trademarks is geographically limited. This might be the case if, for instance, services are offered to the public in a single establishment (a restaurant, a shop, a medical clinic…). In such case, evidence showing an extensive use of the trademark, such as

  • a significant turnover over several years
  • notoriety acquired outside the place where the services are offered to the public
  • a substantial number of clients residing outside the place where the services are offered to the public
  • advertising campaigns published or broadcasted outside the place where the services are offered to the public

might help showing genuine use of the trademark despite its limited geographical extent of use.

We strongly recommend trademark owners to maintain chronological records of documents showing use of their trademarks such as representative invoices, records of marketing campaigns (and relative expenses), web-traffic statistics showing geographic location of visitors, press articles, sales figures etc., as such documents may be of vital importance for maintaining enforceable trademark rights.

In case of questions, please do not hesitate to contact us.

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