Law & Practice

EUROPEAN UNION: ‘Outward Use’ May Not Mean Consumer Use

Published: June 15, 2020

Anna Zakrocka Karcz Zakrocka Patent & Trademark Attorneys Warsaw, Poland INTA Bulletins Committee - Europe Subcommittee

The General Court of the European Union (GC) found in a case concerning the genuine use of a mark that it was sufficient that the “outward use” of the mark was aimed at professional users, not just end consumers.

In Dekoback GmbH (Dekoback) v. EUIPO, intervener DecoPac, Inc. (DecoPac), Case T 80/19, March 5, 2020, the GC dismissed the action and upheld a decision of the Board of Appeal of the European Union Intellectual Property Office (BoA).

On April 1, 1996, DecoPac registered the DECOPAC trademark as European Union Trade Mark (EUTM) No. 000160747 in Classes 29, 30, and 35.

On October 27, 2015, Dekoback filed an application for revocation of that registration claiming that the contested mark had not, within a continuous period of five years, been put to genuine use in the EU in connection with any of the goods and services covered by the registration.

In its June 14, 2017, decision, the Cancellation Division declared DecoPac’s rights to be revoked in their entirety on the ground of lack of genuine use. That decision was appealed by DecoPac on August 14, 2017. By the decision of November 26, 2018, the BoA partially upheld the appeal and annulled the Cancellation Division’s decision in the part related to goods in Class 30 (“edible and inedible decorations for cakes and pastries”). The appeal was dismissed as to the remainder.

Dekoback subsequently brought an appeal before the GC claiming that the GC should annul the decision of the BoA and cancel the DECOPAC trademark in its entirety.

Dekoback’s plea related to: (1) the evidential value of invoices with regard to proving genuine use of the contested mark during the relevant period; (2) the BoA’s allegedly erroneous finding that the mark was used as a “house mark”; (3) the alleged lack of distinction between genuine use of the mark in connection with edible and inedible decorations for cakes and pastries because the evidence related solely to inedible decorations; and (4) the alleged lack of evidence that the goods concerned had reached end consumers.

The GC dismissed the action in its entirety. With regard to Dekoback’s claim that genuine use of the mark vis-à-vis end consumers had not been proven, the GC pointed out that “outward use” does not necessarily mean use aimed at end consumers. Genuine use of a mark relates to the market in which the proprietor of the EUTM pursues its commercial activities and in which it hopes to put its mark to use in the territory of the EU (a public of baking professionals in the present case). The line of reasoning advocated by Dekoback was based on the incorrect assumption that marks used only in relations between professionals cannot enjoy the protection of Regulation No. 207/2009 (now Regulation (EU) 2017/1001). It was pointed out in that regard, the relevant public at which trademarks are aimed comprises not only end consumers but also specialists, industrial customers, and other professional users.

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