With judgment rendered on May 14, 2013 (joint cases T-321/11 and T-322/11), the EU General Court confirmed OHIM’s decision to reject two oppositions against a trademark application, both based on the prior registration and alleged use of the same word as a domain name.
The two oppositions were based on Article 8, par. 4, of the Community Trademark Regulation No. 207/2009 (CTR), which considers the “use in the course of trade” of a sign to be a valid ground for refusal of registration of a posterior trademark.
The General Court, following other precedents (inter alia, decision of March 29, 2011, in the Anheuser-Busch case, C-96/09P), stated that are relevant only those commercial uses aimed to an economic benefit, at the condition that they are effective and well established in terms of duration, intensity and general diffusion.
The Court affirmed that the registration of an Internet domain name that remained inactive was not a “use in the course of trade” capable to qualify as a valid ground for refusal of a later filed trademark.