EU trademarks (EU TMs) can be vulnerable to revocation actions if the trademarks are not appropriately used in the market for each of the relevant goods and services. EU trademark holders have a ‘grace period’ of five years; however, once this period has expired, they must be able to show proof of ‘genuine use’ if they are to protect their marks from such actions. But, what is considered ‘genuine use’ and what if a trademark is used in a different form from which it was registered? Novagraaf’s Frouke Hekker explains.

The ‘genuine use’ requirement
According to the Court of Justice of the European Union (CJEU), a trademark can be considered to fulfil the requirement of genuine use when facts and circumstances show that it has been used to identify the origin of the goods and/or services outwardly, and in the genuine or real manner for which the trademark has been registered.

This includes use in the relevant economic sector to maintain or create market share for the goods or services protected by the trademark, as per the nature of the relevant goods or services, the characteristics of the market, and the extent and frequency of use of the mark. Use must be ‘actual and sufficient’ and must be demonstrated by solid and objective evidence. Account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period for which the mark was used and the frequency of use.

The ‘outward’ use of a mark does not necessarily mean that its use has to be aimed at end consumers; instead, according to the CJEU, genuine use can relate to the market in which an EU TM owner pursues its commercial activities and in which it hopes to put its mark to use.

What if a trademark is used in a different form from which it is registered?
The EU Trade Mark Regulation (EUTMR) states that use of a trademark in a form different from the one registered still constitutes genuine use if the elements that are different do not alter the distinctive character of the trademark. A slight adjustment of a figurative trademark, therefore, will generally be acceptable. On the other hand, a complete rebranding of a company’s trademark will most likely require a new registration.

What happens if the use requirement is not met?
A trademark that does not fulfil the conditions of genuine use can be (fully or partially) revoked if it can be shown that it has not been genuinely used within a five-year period for each good or service for which the trademark has been registered. The time period to prove use in a revocation procedure is limited. That means it is very important to continuously document use of the trademark; for example, by recording or storing (dated) packages, labels, price lists, catalogues, invoices, photographs, advertisements in newspapers and other media, and/or other branded content or statements.

Overcoming revocation actions: The Fruit (of the Loom) example
In a recent revocation proceeding, Fruit of the Loom Inc. needed to show proof that the company had genuinely used the word trademark ‘FRUIT’, registered in May 2006 for ‘clothing, footwear, headgear’ (class 25), following a revocation action by Takko Holding GmbH.

Use of the standalone mark ‘FRUIT’ could not be established according to the Cancellation Division of the European Union Intellectual Property Office (EUIPO), as the use for which Fruit of the Loom Inc provided evidence was not sufficient too show that there had been use of the trademark aimed at end consumers. EUIPO’s Board of Appeal (BoA) later confirmed the ruling; however, the EU’s General Court did not agree in its July 2016 judgement. It ruled instead that the BoA had committed an error of law in overlooking the fact that outward use of a mark does not mean that it has to be aimed at the end consumer in order to fulfil the use requirement. In addition, the General Court found that the BoA had not carried out a global assessment of the evidence, and therefore annulled BoA’s decision.