How much use is “use” of a Community trade mark and the return of the National Mark?

The principal of “use it or lose it” is well-established in the field of trade marks. That is to say, use your registered mark for the designated products/services, or run the risk of a) difficulties in enforcing your rights in opposition/infringement actions and/or b) (part-) cancellation of your registration for non-use.

Until recently trade mark owners had always been fairly confident that use of a Community trade mark in just one EU member state would be sufficient to validate their rights, giving them a continued monopoly across twenty eight countries, for use in just one.

Not for much longer it seems; recent case law not just in the UK suggests that use in a single EU member state will no longer be enough and if a CTM owner wants to maintain its EU-wide rights, it will have to have used its mark in at least two countries, if not more. Brand owners should therefore be looking increasingly to national registrations in key markets to bolster their existing CTM protection.

The first recent case to send shockwaves through the trade mark world in the UK was the Sofaworks [1] case at the Intellectual Property Enterprise Court (IPEC) in June 2015, which ruled that the claimant’s two CTMs were liable to be revoked for non-use, since although there was extensive evidence of “genuine use” in the UK during the required period, there was insufficient use anywhere else in the EU.

Some thought IPEC was going out on a limb but the Benelux Office of Intellectual Property has also since then rejected an opposition filed against Nike’s JUMPMAN mark [2], holding that use of the opponent’s CTMs in Bulgaria (and Ukraine) did not count as sufficient “use in the EU”. This follows a similar victory for Nike against the same party at the UK IPO last year [3], where limited use of the opponent’s marks in Bulgaria and Romania was judged insufficient.

So what is next for CTM owners? Well, first of all there is still little certainty or consistency. Although “one country is not enough” has been the recent trend, nevertheless OHIM recently rejected a non-use cancellation action against a CTM which had been used for just a single restaurant in a single city in the EU [4]. This was perhaps an unusual case, the restaurant in question being a famous restaurant in London (a city of huge significance in the EU), which is frequented by people from all over the world including in the EU. For this reason, territorial scope of use alone was deemed not to be the determining factor. However, it does show that the Courts and Registries have so far at least been reluctant to adopt a blanket approach, which is perhaps correct considering that the assessment of “genuine use” is (in theory at least) supposed to look at not just where a mark has been used, but also to what extent, how and over what duration, which will obviously differ on a case to case basis.

Further, even if a CTM is revoked for non-use, all is not lost. The CTM owner can still convert to national applications in countries where the mark has been put to genuine use. Nevertheless, this will obviously be expensive and could seriously impact or delay the trade mark owner’s ability to enforce its rights (since an infringement action can be brought only once a mark is actually registered).  In addition, the unusual and very specific facts of the above restaurant case are very unlikely to apply to most CTM owners.

For this reason, and since the “one is not enough” trend now looks set to continue, brand owners who use their marks in only one EU country should give serious consideration to registering their marks at a national level in key markets, as well as at CTM level, to maintain an agile and robust brand protection strategy.  National registrations can also offer other important benefits over a CTM, including ease of proving reputation and enhanced distinctiveness, and avoiding problems of acquiescence following third party use in countries of no interest to the CTM owner.

Rowena Price is a partner and trade mark attorney at Gill Jennnings & Every. She is recognised by Chambers UK 2016 edition as a Leading Individual and is praised for her creative thinking and responsiveness for trade mark prosecution, portfolio management and brand strategy work. Rowena can be contacted on 020 7655 8500 or rowena.price@gje.com.

[1] Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 (IPEC), 29 June 2015

[2] Benelux Trade Mark Opposition no. 2008312: https://www.boip.int/wps/wcm/connect/www/767a051e-7468-4a3c-88d3-2fded6fa4c45/2008312.pdf?MOD=AJPERES&CACHEID=767a051e-7468-4a3c-88d3-2fded6fa4c45

[3] UK IPO Trade Mark Opposition No. 400331: https://www.ipo.gov.uk/t-challenge-decision-results/o45114.pdf

{4] CTM Revocation Action No. 8943C