Services provided in the USA and use of a trademark in Europe: a possible match

With judgment of July 13th 2022, given in the case T-758/20, the General Court of the European Union ruled again on the effective and genuine use of an European trademark.

The issue involves, in particular, the application for revocation presented against a trademark registered at EUIPO, then integrally granted by the Invalidity Division and confirmed on appeal by the relative Board.

The Board found that with regards to the place of use of the contested sign, a great amount of evidence presented by the owner related to hotel services and accessory services provided, however, not in the Union but in the United States of America.

Therefore, even though the appellant had demonstrated that the advertising claims and the offers of such services were destined to the consumers in the European Union through a series of evidence among which advertisements, promotional campaigns, Google Analytics data related to the visit rate, invoices etc.. the Board of Appeals considered that such evidences were nevertheless not sufficient to assume that the disputed trademark had been effectively used in the Union

For these reasons, the Board confirmed the decision of the Euipo Invalidity Division.

Asking for the annulment of this decision, the owner of the trademark appealed to the General Court of the European Union contesting the decision of the boards of appeal for not having considered, as proof of effective use, the advertisements and the offers for sale which, even though they were related to hotel services and accessories provided in the United Stated, were nevertheless directed to consumers of the relevant territory and that is the European Union.

The Court, dealing with the issue, recalled the founding principles on the effective use of a European trademark that is useful to remember.

And effective use of a trademark happens when the same is used in compliance to its essential function, that is to guarantee the identity of the origin of the products or services for which it has been registered, in order to create or preserve an outlet for such products or services (see judgement of January 31st 2019 Pandalis/EUIPO, C-194/17 P, EU:C:2019:80, point 83 and the case-law cited).

The court found then that the expression “effective use in the Union” pursuant to art. 58 paragraph 1 letter a) of the 2017/1001 Regulation (Regulation of the European Trademark) had to be interpreted in the sense that the term “Union” defined the geographical market which serves as point of reference for any analysis aimed to establish if a European trademark is object of an “effective use”.

On the basis of such premises, the Court considered that the Boards of Appeal had made a mistake by not distinguishing between the place in which the services provisions took place such as advertisements or the offers of such services and the place of use of the trademark.

The European Judge found in fact that although in the case-law the notion of effective use in the Union implies that the use of such trademark in third States cannot be taken into consideration to determine an effective use (judgment of December 19th 2012, Leno Merken, C-149/11, EU:C:2012:816, point 38), from such case-law it cannot be deduced that the acts of use of the trademark aimed to promote and to offer for sale some services are necessarily performed, outside of the Union territory.

In substance, even though the appellant had provided its own services in the United States of America, this did not exclude, —–, that the same, through the activity of promotion and offer for sale of the same, use its own trademark in the Union in compliance to its essential function to create or preserve an outlet for such products and services and, therefore, in an effective and genuine way.

Therefore, in conclusion, the General Court of the European Union recognized that the advertisements and the offers for sale aimed at the public in the Union constituted acts of use of the trademark and that, consequently, they were relevant elements in order to demonstrate its effective use.

By declaring, therefore, the contested decision tainted by illegitimacy, the Court of the European Union established its annulment.