The Community Trademark Regulation provides that the rights of the holder of a Community trademark shall be declared to be revoked on application to the OHIM if, within a continuous period of five years, no genuine use of the trade mark has been made within the Community territory in connection with the goods or services in respect of which it was registered, pursuant to article 51.
Continental Reifen Deutschland GmbH filed an application with the OHIM for revocation of the Pirelli Tyre S.p.a.’s Community trade mark “P5”, registered, among other goods, for tires, based on the circumstance that the trade mark at issue had not been effectively used in the last five years.
Pirelli’s defense arguments to oppose the revocation action were mainly focused on its alleged ownership of a family of marks consisting of the combination of the letter “P” associated with a number (zero, 1, 2 3 etc). In particular, under Pirelli’s opinion, because the trademark “Pirelli” is a well-known mark and “P” is commonly perceived from the public as to stand for “Pirelli”, then entire family of marks (including P1, P3, P4, P7, PZERO) it owns shall benefit of the status of a well-known trademark and accordingly none of the trademarks belonging to such family can be subject to revocation. In this perspective, under the family of marks doctrine, the actual use of some trademarks belonging to the family “P + number” would have ruled out the revocation of P5 for non-use.
On the 31st of August 2015, the OIHM revoked Pirelli’s P5 trademark on the grounds of non-use. According to the Office’s opinion, in revocation proceedings for non-use a trademark must be considered individually, irrespective of it being part of a family of marks, and since Pirelli was not able to prove the actual use of P5 trademark in the Community territory over the past five years, Pirelli’s trademark is not immune from revocation on grounds of non- use.
The above-mentioned decision confirms that the ownership of a family of marks may help in preventing registration or use of a trademark that is confusingly similar to a pre-existing group of marks; however, it is not a proper defensive argument to prevent a single trademark revocation whenever no genuine use thereof can be proved.