The ‘Standard’ of Use Evidence in the EU: Advertising and Promotion Can Be Enough to Show Genuine Use
Does evidence of booking, advertising, and selling services within the EU constitute genuine use of a registered trademark, even if the actual service provision occurs abroad?
In a recent decision, the General Court of the European Union (EU) addressed a critical question: Does evidence of booking, advertising, and selling services within the EU constitute genuine use of a registered trademark, even if the actual service provision occurs abroad? The case, T-768/20 (Standard International Management LLC v EUIPO), sheds light on the intersection of trademark law, advertising, and cross-border services.
Background
Standard International Management LLC (SIM), a hotel operator, owns the EU logo mark “The Standard,” registered in 2011. However, the hotels operating under this brand are all based in the United States. Asia Standard Management Services Ltd (ASMS) sought to revoke the mark, alleging a lack of genuine use within the EU. The European Union Intellectual Property Office (EUIPO) Cancellation Division initially revoked the mark, a decision later upheld by the Board of Appeal.
The General Court expanded the scope of evidence relevant to proving genuine use. While the Mark was not specifically registered for “advertising,” “booking,” “travel agency,” or “sales” services, the Court emphasized that evidence of such use remains crucial. Specifically, advertisements and offers for sale that target the services and goods associated with a registered mark contribute to demonstrating genuine use.
Key Points from the Decision:
- Broadening the Definition of Use: The Court rejected a narrow interpretation of genuine use. Instead, it recognized that advertising and promotional activities, even if not directly related to the registered services, can still demonstrate the mark’s effectiveness.
- EU Product Compliance Perspective: The Court aligned its decision with EU product compliance guidelines. By targeting EU customers from non-EU locations, goods and services become available within the EU, necessitating compliance with EU law.
- Location Matters: When assessing genuine use, the Court focused solely on the location of advertising and promotion. The physical location of hotel services operation was deemed irrelevant.
Implications for Brand Owners
This decision carries significant implications for brand owners, especially those headquartered outside the EU:
Strategic Advertising: Brand owners should strategically target EU consumers through advertising and promotional campaigns, even if their services operate elsewhere. Evidence of such targeted efforts strengthens the case for genuine use.
EU Trademarks Gain Value: The ruling underscores the value of EU trademarks for non-EU brand owners. By demonstrating genuine use, these trademarks maintain their strength and enforceability.
Navigating Cross-Border Services: Brand owners operating globally must carefully consider how their advertising and promotional activities impact their EU trademarks. A proactive approach ensures compliance and protects their valuable intellectual property.
The General Court’s decision sets a new standard for genuine use evidence within the EU.
Disclaimer: This article is for informational purposes only and does not constitute legal advice. Consult our qualified attorneys for specific legal guidance.