In a judgment dated January 30, 2015, the General Court (Case T-278/13) rendered an interesting decision on the appreciation of the use of a mark in revocation proceedings.
In this case, the registration in 2004 of the mark “NOW + logo” in respect of the services in classes 35, 41 and 42 was in issue. Now Wireless Ltd, apparently interested in this mark which partly relates to its company name, filed an application for revocation of the mark, claiming that the latter had not been put to genuine use in the European Union for a continuous period of 5 years.
In fact, Community law provides that when the proprietor of a trademark has not been puting it to genuine use in connection with the goods or services listed in the registration, within a continuous period of five years, the result is the revocation of their rights.
Trademark law allows companies to identify their products and services from those of their competitors and since, in contrast to copyright law, it requires no creativity, protection is not justified anymore when the mark is not exploited.
It is therefore natural to give third parties interested in the mark the opportunity to obtain the revocation of the rights owned by the company which monopolizes a trademark without exploiting it.
The proprietor of the mark should then establish that the mark has been exploited in relation to the goods or services in respect of which it is registered, during the relevant period.
In fact, the Cancellation Division declared the revocation of the mark with regard to classes 35 and 41 only whereas the validity of the registration of the mark was upheld for services in class 42.
Consequently, the applicant filed a notice of appeal with the Office for Harmonisation in the Internal Market (OHIM), against this decision in so far as it upheld the registration of the mark in class 42. Since the OHIM dismissed the appeal, the General Court then had to decide this case and shed more light as to the appreciation of the genuine use of a mark for the goods and services for which it is registered.
In this case, the proprietor of the contested mark proved that he had affixed the mark on modems and 3G keys and also provided services for access to electronic networks, services for rental of equipment and software as well as information to its clients under the contested mark, during the relevant period.
However, the issue was to know whether those services fell under those specified in the application for registration. Indeed, only the evidence of use of the mark relating to the goods or services for which it is protected makes it possible to dismiss the revocation. The applicant claimed that those services fell under only one of the two sub-categories for which the mark is registered and that the revocation should be declared with respect to the other sub-category of services in class 42.
In fact, it all depends on the products and services for which the mark is registered in the registration certificate. If the goods and services for which the mark is registered form part of a broad category, it is well-established case-law that independent sub-categories within this category and evidence of the use of each of those categories need to be identified. However, the products may also be divided into sub-categories otherwise than in an arbitrary manner.
In this case, the Court considered that it was not necessary to define a sub-category of services to the extent that “the services concerned all meet the same need”. In this connection, it has been highlighted that “the end-user of each of the services concerned is the same consumer wishing to access the electronic networks and who relies on all of those services for that purpose”.
What can we finally conclude from such a decision on revocation proceedings? Firstly, it appears that the description of products and services listed on the registration certificate is essential and must not be chosen lightly since it determines the obligation of effective exploitation of the mark. This first finding is however far from being new. It also appears that the products and services of the same class need to be classified according to their purpose and their end-use for the consumer. Hence, if it appears that the goods or services listed aim at the same consumer, they cannot objectively be separated and the evidence of use of one of them will be enough to prove the use for the whole.
It remains unclear what the Court understands by “services meeting the same need” and how to apply this case-law to other categories of services as well as to goods.