This dispute concerns a figurative mark registered for several classes of goods and services (18, 25, 38, 39, 41, 43 and 44) which was challenged by a third party before the EUIPO for revocation for non-use. At first instance, the Cancellation Division canceled the mark in its entirety and therefore the trademark owner appealed against the decision. However, the Board of Appeal dismissed the appeal.
It should be noted that the central issue of the case was represented by the fact that the evidence presented by the proprietor of the contested mark demonstrated, on the one hand, that the sign was mainly used to offer hotel services and ancillary services in the United States, but, on the other hand, that a considerable number of documents consisted of advertising activities targeting a European clientele. On reading the decision of the Board of Appeal of EUIPO (R 828/2020-5 of November 27, 2020), it is indeed possible to see that the documents submitted included: media coverage in several EU countries EU; online articles; owner’s website impressions; excerpts from a holiday booking site, EU targeted advertising campaigns; social media impressions; consumer reviews on TripAdvisor, EU customer bookings and EU consumer invoices; and Google Analytics figures for the website displaying the contested mark.
Despite the wide variety of documents provided by the proprietor of the mark (later applicant before the General Court) which were linked in one way or another to the territory of the EU, the Board of Appeal found that, given that the services were nevertheless rendered outside the European Union, and that the nationality of the customers using those services was irrelevant. In this respect, the decision of the Board of Appeal shared the reasoning set out in the first instance decision of the Cancellation Division: “The fact that EU consumers can travel to the United States and book hotels with the proprietor of the EUTM is not relevant, because the place of use of the mark remains the USA, whatever the nationality or the geographical origin of the consumers. Therefore, all the evidence relating to the use of the sign outside the territory cannot be taken into account and must be excluded” (paragraph 6).
Additionally, advertising or booking material targeting EU consumers was ignored, as the “source” of the services was located outside the EU borders. Specifically, EUIPO’s Board of Appeal made it clear that “even if the advertising, promotion and sale of US-based hotel and ancillary services were targeted at EU-based or originating consumers, it does not the fact remains that the hotel and ancillary services themselves were actually provided outside the internal market of the EU, namely in the “third State” of the United States. Therefore, the object of the advertisements and sales occurred outside the EU and was therefore not located in the relevant territory” (paragraph 86).
The trade mark proprietor then appealed against the decision of the Board of Appeal of EUIPO before the General Court of the EU, only with regard to the classes concerning hotel services and ancillary services.
Adopting a totally different approach, the General Court reversed the decision of the Board of Appeal, finding that it wrongly confused the place of supply of the services with the place of use of the mark.
In this sense, the Court first focused on the fact that advertising activities may constitute genuine use in themselves, considering that, in accordance with Article 9(3) of the Regulation, the proprietor of a mark of the European Union is entitled to prohibit a third party from carrying out a number of activities, including using the same sign or a similar sign for advertising purposes.
Secondly, the Court observed that the fact that the services were provided in the United States did not automatically imply that the promotional activities linked to those services should be considered as automatically linked to the territory of the United States, to the exclusion of the union territory. In other words, as the Court stated “(…) it suffices to find that there is genuine use of a mark when this mark is used in accordance with its essential function, that this mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the products and services for which it has been registered, in order to create or maintain a market for these products or services. Even if the applicant were to supply goods or services outside the European Union, it is conceivable that it would use this mark in order to create or maintain an outlet for those goods and services in the European Union” ( item 38).
Furthermore, the Court considered that the “place of use of an EU trade mark” does not necessarily coincide with the place where the services are provided because, as provided for in the EUIPO guidelines, the advertising alone may be sufficient to prove genuine use in the EU. , as in the case of advertising holiday accommodation or particular products. To be precise, the decision refers to the previous version of the guidelines, which was in force when the facts of the case arose, but the same principle is also found in the current version in Part C, Opposition, Section 7 Proof of use, paragraph 188.8.131.52 (use for advertising purposes) which reads: “It seems doubtful that mere advertising, without any present or future plans for the actual marketing of goods or services, constitutes use serious. As in most other situations, the outcome will depend on the circumstances of each case. For example, where the goods or services are available abroad, such as holiday accommodation or particular products, advertising alone may be sufficient to constitute genuine use”.
This Court decision seems to indicate that trademark owners can rely on a certain “laxer” approach to the type of evidence of genuine use that can be presented in revocation proceedings, in the sense that It considers that, in certain In certain circumstances, advertising in the EU without selling or providing services in the same territory could be sufficient to demonstrate genuine use.
However, in our view, the approach taken by the Court was influenced by – and is therefore limited to – the types of services specifically concerned by the case (i.e. hotel accommodation) , which by their nature may be advertised in one or more countries (here, the EU), but provided in a different territory (in this case, the United States). Would it be possible to apply the same approach to all types of services or goods? On reading the provisions of the Guidelines cited by the Court, this seems doubtful, since they specifically point to the examples of “advertising of holiday accommodation” and “particular products”, thus alluding to the fact that it is not not a general rule, and each challenge to the genuine use of a mark will continue to rest on its own facts.