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The CJEU rendered a crucial decision in its recent Intas caseon the maintenance of Intellectual Property rights. According to the Court, it is not imperative that a European Union (EU) trademark be used in a substantial part of the EU. On the contrary, its use in a single Member State could be enough to prove genuine use.

In the matter before the CJEU for the mentioned decision, the claimant filed a trademark application before the EUIPOconsisting of the sign “INTAS” and designating goods in classes 5 and 10.

The defendant subsequently filed an opposition to this application claiming that it was similar to two of its earlier trademark registrations which both consist of the sign “INDAS” and cover goods in the same classes.

The claimant requested proof of use of the earlier trademarks. The defendant duly submitted this evidence and its opposition was accepted by the EUIPO on this basis. The claimant proceeded to appeal the decision before the EUIPO, but its appeal was dismissed. Finally, the matter was brought before the CJEU.

• The territorial scope for genuine use

The CJEU examined the question of whether proof of use submitted for only one Member State for the use of an EU trademark was sufficient to support its genuine use pursuant to Article 47(2) of the EU TM Regulation.

Interestingly, the CJEU rejectedthe argument that the territorial scope of the use of an EU trademark cannot be limitedto the territory of a single Member State. The Court also rejected the argument that the genuine use of an EU trademark necessitates that the trademark be used in a substantial part of the EU.

Yet, the CJEU still admits that it is reasonable to expect that an EU trademark shall be put to use in a wider area than the territory of one Member State to show its genuine use. However, the Court underlines that it is not always imperativethat the trademark be put to use in an extensive geographic area because evaluation of genuine use is an overall assessment. It depends on all the characteristics of the related goods or service, and not only on the geographical scope of the use.

The CJEU accepts that, in certain cases, the market for the goods or services in the scope of an EU trademark can be restricted to the territory of only one Member State. In such a case, proving serious use of the EU trademark within that State may satisfy the conditions for genuine use.

• Assessment of genuine use

The CJEU holds that it is impossible to determine, a priori, a certain territorial scope when assessing if the use of an EU trademark is genuine or not. Rather, an EU trademark is deemed to be genuinely usedwhere it is used in accordance with :

– its essential function of designating origin for the related goods or services ;

– the objective of maintaining or creating market sharesin the EU.

When evaluating genuine use, the following factors should be taken into account: the characteristics of the relevant market; the nature of the goods or services within the scope of the trademark; and the scale, territorial extent, regularity and frequency of use.

Impact of the Decision

This is an important interpretation made by the CJEU affecting the burden of proof when it comes to showing the genuine use of an EU trademark. The CJEU clearly sets forth that the territorial scope is only one of several factors to consider when assessing whether the trademark is put to genuine use or not.

This does not mean that the territorial extension of the trademark’s use is not important at all. However, the CJEU affirms that the geographical extension of the trademark’s use is not the only factorto take into account. This assessment depends on all the facts and circumstances relevant in determining if the commercial use of the trademark creates or maintains market sharesfor the concerned goods or services.

Consequently, the CJEU held that the assessment of whether the use of a trademark is genuine or not is an overall assessment. The territorial scope of the use is only one factor in this assessment, amongst the other factors mentioned in this article. This interpretation will probably lead to changes in the strict perception that the genuine useof an EU trademark cannot be proven with showing its use in one single Member State. It will soften the burden of proof on the trademark owners.

While one generally refers to the “three criteria” of the UDRP (a trademark similar to the domain name; the absence of rights or legitimate interests of the defendant in the disputed domain name; and the bad faith of the registrant), it should be kept in mind that bad faith in UDRP matters has two aspects: the first is bad faith registration and the second is bad faith usage. Therefore, proving only one of these elements is insufficient even though it may be considered “fair” that a name used in bad faith should be transferred to the applicant.
In the present case, Great American Hotel Group, Inc. complained that its former vice-president retained the domain name <greatamericanhg.com> and changed the password of the account used to manage this name with the registrar.

It all started in 2011 when the applicant decided to adopt the name Great American Hotel Group. Its president at the time asked Mr. Greene, then vice-president of the company, to reserve the domain name <greatamericanhg.group>.
The latter did so, but – apparently without notifying his superior – reserved the domain name in his name instead of that of the company. He did, however, record the company’s postal address, and pay with the company card. In 2012, he hired an anonymity service to hide his data.

Since its registration, the name had been used for the company and Mr. Greene had always treated the domain name as part of the company’s assets.

However, following disagreements, Mr. Greene was suspended from office in 2015 and dismissed in 2016. In 2017, the name was renewed by the company’s technical teams even though Mr. Greene was no longer present. However, the latter subsequently changed the password so that the name could no longer be renewed by the company. The applicant’s counsel proceeded to send Mr. Greene a letter of formal notice, which remained unanswered, leading to the filing of a UDRP complaint.

The panellist acknowledged that the applicant had common law trademark rights through the use of the sign “Great American” and that the registrant did not have any legitimate rights or interest in the name as it was created for the applicant company.
He also acknowledged that the domain name was used by Mr. Greene in bad faith.

Nevertheless, the panellist was more sceptical regarding the issue of bad faith registration. Indeed, the name had been reserved by Mr. Greene at the request of the president of the applicant company, which, in principle, had, in fact, been a registration in good faith.

In order for registration by an employee to qualify as having been done in bad faith, the panellist specified that the employee must have, from the beginning, had “an intention to cause harm”. Therefore, the evaluation must be factual and done on a case-by-case basis.

In this case, Mr. Greene had registered the domain name in his own name. The panellist found that “this may be subject to questioning, and the fact that he did not mention the company does not constitute a good domain name management practice”, however, the president and the company seemed to be equally as uninterested in formalizing the reservation of the name.

For four years, until he was suspended from his functions, the registrant had always displayed conduct that demonstrated that he understood that the name belonged to the company. Thus, there is no reason to suppose that by reserving the name four years earlier, he had intended to compete with the applicant or to benefit from some type of tactical advantage against him.

Consequently, the plaintiff’s complaint was dismissed as the registration in bad faith had not been established. Nevertheless, the panellist specified that the applicant could turn to other avenues to try to obtain relief.

The significance of this decision, in addition to highlighting the dual condition of bad faith, is that it reiterates the need to set up an internal naming charter to avoid any dispersion of assets, both in terms of trademarks and domain names.

WIPO, Arbitration and Mediation Center, Sept. 2, 2019, No. D2019-1638, Great American Hotel Group c/ Domains By Proxy, LLC / R Greene