On the 20th of December 2016, the Board of Appeal of European Union Intellectual Property Office (EUIPO) dismissed as unfounded the action filed by Pirelli Tyre S.p.A. against the previous decision of the Cancellation Division of EUIPO on the revocation of Pirelli’s trademark “P5” on the grounds of non-use.
The principle stated by the Board of Appeal can be summarized as follows: whenever the claimant does not avail of documents witnessing genuine use of a trademark over the relevant period of five years it cannot rely on the family of trademarks doctrine to substantiate his position.
According to the Board’s opinion, the effective use of P5 trademark between the relevant period (4th of August 2009 to 3rd of August 2014) has not been proven in light of the annexes brought by Pirelli and, pursuant to article 51 of European Union Trade Mark Regulation as amended by Regulation (UE) 2015/2424, the revocation of Pirelli’s P5 trademark shall be confirmed.
The Board confirmed that, in revocation proceedings for non-use of a trademark, the genuine use cannot be proven through the use of similar trademarks which are supposed to belong to the same trademarks family. This because the argument of the “defensive trademark” claimed by Pirelli, does not belong to the protection system of the European Union Trademark in which the genuine use of the trademark represents an essential precondition to the recognition of the exclusives rights upon a trademark.
In addition, the Board of Appeal considered that the differences between other Pirelli’s trademark such as “P1” or “P2” and the trademark “P5” are not negligible and the genuine use thereof cannot be extended to the trademark “P5”. In fact, despite article 15 (1) (a), provides that the “use of the EU trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered” shall also considered as a genuine use of the trade mark, the Board stated that with reference to trademarks composed by simple elements, such as a single letter and a single number, the mere substitution of one of those elements does result in an alteration of their distinctive character.
Once again, EUIPO confirmed that the ownership of a family of trademark itself is not a proper defensive argument in order to avoid the trademark revocation on grounds of non-use.