According to one recent decision, the answer is Yes!
Yes, according to the General Court. In its decision the General Court (T-768/20) confirmed that marketing activities targeting consumers within the EU, for services offered outside the EU, can be used as evidence to prove use of an EU-trademark.
EU-trade marks which have been registered for more than five years are vulnerable to revocation. A third party may after five years apply for revocation of the registered trade mark. The trade mark owner then must prove that the EU-trade mark has been put in genuine use in the EU in connection with the goods or services in respect of which it is registered. The owner must present evidence of use, namely the place, time, extent and nature of use. If the owners fail to prove genuine use of the EU-trade mark, the rights will be revoked.
Background to the Case
The trade mark owner had its EU-trademark registered in 2011 for several different goods and services including hotel and restaurant services in Class 43. In 2018 an application for revocation was filed against the EU-trade mark. The Cancellation Division revoked the EU-trade mark, and the Board of Appeal dismissed the appeal made by the EU-trade mark owner.
Reasoning of the Board of Appeal
The Board of Appeal reasoned that the hotel services offered under the EU trade mark had been provided outside the EU, namely the US. It held that evidence of marketing activities such as promotional campaigns targeting customers in the EU was insufficient to prove use of the EU-trade mark, since the actual services were provided outside the EU. Consequently, the EU-trade mark was revoked. The EU-trade mark holder appealed the Board of Appeal decision to the General Court.
The Decision of the General Court
Contrary to the Board of Appeal the General Court held that the marketing activities targeting customers in the EU could be admissible evidence to prove genuine use of the EU-trade mark. The General Court made a distinction between the place where the services were rendered and the place of the use of the mark. It held that it is the place of use of the mark which is relevant to the examination of the genuine use of an EU-trade mark. Even if the EU-trade mark owner provides services outside the European Union, it is conceivable that the EU-trade mark owner would make use of that mark to create or preserve an outlet for those services in the EU. Hence, the General Court found that the Board of Appeal interpreted the EU law incorrectly.
Good news for trademark owners
Revocation actions can be hard to defend since it may be difficult and cumbersome for the EU-trade mark owner to collect the necessary evidence to prove genuine use of the EU-trade mark. Collecting evidence in relation to the use of a trade mark usually requires the holder to consult several different core parts of its business, such as sales, marketing and finance. This requires the trade mark owner to spend time and resources at collecting evidence. The decision from the General Court is welcoming since it gives further clarity to what type of evidence can be used to defend a revocation action.
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