A new wake-up call regarding the importance of genuine use for trade mark owners

On September 2, 2024, the EUIPO Board of Appeal (the “BoA”)  ruled against the owner of the ICE trade mark registration, deeming that the genuine use of the trade mark had not been proven.

The ICE case

On June 13, 2017, Gilmar S.p.A. (the “Proprietor”) filed an application for registration of the sign , covering goods in several classes, and as far is relevant here, in class 18 and class 25 (the “EUTM”). 

In August 2022, Drifa ehf. (the “Applicant”) filed an application for revocation of the EUTM, arguing that the Proprietor had failed to genuinely use it within the European Union during the five years leading up to the application.

In response, the Proprietor submitted over 2,000 pages of evidence, including invoices, catalogues, screenshots, social media content, and affidavits. However, the Cancellation Division partially granted Applicant's request, revoking the EUTM for most of the claimed goods and services but retaining it for classes 18 and 25.

Not satisfied, the Applicant appealed, claiming that genuine use had not been proven even in relation to goods in classes 18 and 25 and, therefore, the EUTM should be revoked also in relation to those classes.

On September 2, 2024, the BoA granted Applicant's request and revoked the EUTM in its entirety.

Legal background

Pursuant to article 58 (1)(a) EUTMR a “EU trade mark shall be … revoked … if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered”.

Thus, when the proprietor of a trade mark is notified of the commencement of revocation proceeding for non-use, the proprietor - if interested in maintaining the trade mark - must provide the Office with evidence suitable to demonstrate the place, time, extent, and nature of the use made of the trade mark; in other words, evidence aimed at proving the genuine use.

In proceedings brought for revocation for non-use, when filing proof of use - as pointed out by the BoA in this decision - the burden to “clearly link each allegation with the relevant particular piece of evidence” is on the proprietor.

The Evidence Breakdown

During the EUTM proceedings, the Office sifted through a mountain of evidence to establish genuine use. However, much of the documentation failed to demonstrate a clear connection to actual commercial activity. Indeed, the BoA noted the following:

Invoices

• Invoices are nearly worthless if not combined with images of the products for which use is claimed.
• Invoices do not necessarily demonstrate that the trade mark appears on the products linked to the codes on those invoices. Invoices must be linked to catalogs depicting the products bearing the trade mark, from which the product code can be seen. Only in this way is it possible to establish a clear link between the code on the invoice and the product and thus prove the genuine use of the sign.

Labels

• Pictures of labels on goods are irrelevant unless it is clear which products the labels have been used in relation to. 

Online Use 

• Screenshots of a proprietor's social media profiles do not demonstrate that the depicted products have actually reached the market.
• Screenshots from social profiles do not provide insight into the number of users reached, unless accompanied by specific analytics data.

In short, the evidence submitted fell short of establishing genuine use, leaving the Proprietor's claims unsubstantiated.

Conclusion

The BoA concluded that the Proprietor failed to demonstrate genuine use of the EUTM within the EU for the goods in classes 18 and 25.

Indeed, as noted, all the evidence filed did not establish a strong connection between the EUTM and its market presence.

This decision underscores the importance of providing clear, objective, and sufficient evidence when defending a trade mark against claims of non-use. It serves as a vital reminder that merely registering a trade mark isn’t enough to stave off revocation. Trade mark owners should take note of the need for specific evidence to avoid non-use challenges.

For tailored advice on trade mark law, do not hesitate to reach out to our team of trade mark professionals.