“TO BE OR NOT TO BE” when it comes to trademarks, or what should be remembered to guarantee genuine use of a trademark

When a party is considering to apply for trademark registration, it is important to remember about the obligation that rests upon the right holder to put the mark to genuine use. What is essential, the use will only be recognized as genuine, if a number of specific criteria are fulfilled. The above issue was the subject of a decision of the Fifth Board of Appeals of EUIPO as of November 25, 2021, in the case with reference number R 578/2021-5 concerning an appeal filed in the proceedings for declaring lapse of a trademark of the European Union No. EUTM 1264183. 

The trademark EUTM 1264183    was applied on August 2, 1999 for the following goods and services:

Class 18: leather and imitation leather and products made of these materials not included in other classes; animal skins; handbags, trunks and travel bags; umbrellas, sunshades and walking sticks; whips, harness and saddlery;

Class 25: clothing, footwear, headgear;

Class 39: transportation, packaging, distribution and storage of leather and imitation leather, products made from these materials, hides and animal skins, bags, trunks, travel bags, sunshades, walking sticks, whips, harness and saddlery products, clothing, footwear and headgear.

The subject mark was subsequently registered on August 1, 2000.

On November 4, 2019, a request was filed in the EUIPO for declaring lapse of the subject mark for all the above mentioned goods and services. The request was recognized by the Office as justified in whole.

Given the date of registration and the date of filing the request, the owner of the mark had to prove its genuine use from November 4, 2014 up to and including November 3, 2019.

The following evidentiary materials were filed in the matter by the trademark owner:

– the copies of notifications regarding the recordal of assignment of the contested mark;

– the copies of annual financial statements for 2015;

– Internet printouts dated August 29, 2019, September 3, 2019, and September 10, 2019;

– articles on women’s footwear dated April 18, 2019, August 29, 2019, September 10, 2019;

– undated photo of a store window;

– an invoice dated August 30, 2019 for a total amount of €128.26;

– a selection of undated photographs showing, among others, articles of women’s footwear and/or their packaging;

– a selection of invoices dating from 2014 to 2017;

– sales documents addressed to customers located in Spain, Italy, Germany, the UK and Australia.

Some invoices were accompanied with shipment documents confirming delivery, a selection of photographs, flyers, catalogs or brochures.

In assessing genuine use, the EUIPO focused on the scope and nature of use (use of the sign as a trademark and use in relation to the registered goods and services). The Office concluded that the evidence submitted by the trademark  owner was insufficient.

It was argued by the Office that among the evidence submitted, there was a lack of those regarding the scope and/or nature of use, which would indicate that the contested trademark was actively used in a commercial sense for all registered goods and services in Classes 18 and 39, and for “clothing” and “headgear” in Class 25.

According to the EUIPO, the submitted invoices demonstrated that one of the former owners of the mark sold articles of footwear to customers located mainly in Spain, but also, to a lesser extent, in Italy, Germany, the United Kingdom and Australia. However, the documents were found to be defective, as they did not make it possible to determine whether the goods, to which they relate, were actually placed on the market.

The mere fact that the mark appeared on documents cannot, by itself and in the absence of further evidence, constitute sufficient proof of the use of the sign as a trademark. A mark used in this form could also be used as a company name or the name of a store.

Out of the submitted invoices, only three of the shoe models appeared in the remaining evidentiary materials. It was respectively one invoice dating from September 2014 for the sum of €84.50 per pair (a total of €507), one invoice from October 2014 for €53.50 per pair (a total of €1,284) and one invoice from October 2014 for €53.50 per pair (a total of €1,284). In total, there were 35 pairs for a total of €2,146, sold over a period of more than one year, and one pair for €40 in May 2017. The Office considered that the above volumes of sale and sums were too small to prove the genuine use of the disputed mark for the indicated goods. Moreover, their net selling price ranges from €40 to €84 per pair, and such amounts are not exorbitant in the relevant market for women (women’s shoes).

Accordingly, the EUIPO concluded that regardless of the price (which is not exorbitant for such goods), 36 pairs of women’s shoes does not constitute evidence of intensive, prolonged, regular or frequent use of the mark. The low quantity sold is therefore not compensated for by the length, regularity or frequency of use, nor by the price of the goods, and thus such use can be considered rather occasional than genuine. In turn, other evidence such as photos of shoes, Facebook printouts, Internet printouts or screen shots, cannot compensate for the above.

The Office noted that the mere presence of a trademark on a website is not sufficient to prove genuine use unless the website also shows the place, time and extent of use, or unless the information states otherwise.

The factors of time, place, extent and nature of use are cumulative, which means that the evidence must contain a sufficient indication of all these factors. Failure to meet one of the conditions is sufficient for the lack of recognition of genuine use.

On March 29, 2021, the owner of the mark filed an appeal with respect to goods in Class 25. In the justification it was argued that in evaluating the evidence of genuine use of the mark, it is not the matter of analyzing each piece of evidence separately, but collectively to determine its most probable and consistent meaning. In order to show that certain models refer to shoes sold and marked with the disputed mark, its owner attached the following evidence:

– extracts from the accounts on Twitter and Instagram;

– a printout from a blog where the disputed mark is promoted.

In order to demonstrate the connection between the challenged mark and the relevant goods, the right holder pointed out that trademark “TO BE” appears at the top of every invoice, on online printouts, on Twitter, Facebook and Instagram, as well as in catalogs, flyers and photos of the mark.

In its response to the appeal, the Office stated that the submitted evidence had been considered as a whole, and the Office correctly concluded that it had not sufficiently proven the genuine use of the mark. Contrary to the mark owner’s claims, there is still no clear connection between the invoices and the photographs and other evidence. The photographs and other evidence do not confirm that the shoes listed on the invoices are models of shoes sold and designated with the contested mark.

The Office found the additional evidence submitted by the trademark owner insufficient. The evidence concerned extracts from the mark owner’s presence on social media, such as Twitter and Instagram, and were print screens from the Internet. The Office refused to take them into account because they were not dated and did not represent the trademark as registered. In addition, they lacked information about the number of viewers or observers. The evidence showed some “presence” but not intensive use of the mark. In addition, the extra evidence filed by the holder referred only to the territory of Spain, which is a fairly limited area, given the kind of the contested goods.

In its response to the appeal, the Office confirmed that the mere presence of a trademark on a website is not sufficient to prove genuine use, unless the website also shows the place, time and extent of use, or unless the information states otherwise.

Genuine use of a trademark occurs when the mark is used in accordance with its primary function, which is to guarantee the identity of origin of the goods or services for which it is registered. In assessing whether the use of a trademark is genuine, it is necessary to take into account all facts and circumstances relevant to determining whether the use of the mark is genuine, in particular whether the use is perceived as a guarantee in a given sector for the mark to maintain or create a market share in the field of goods or services designated with the mark, and also such factors as the nature of those goods or services, the characteristics of the market, and the scale and frequency of the use of the mark.

The examples of admissible evidence of genuine use are packagings, labels, price lists, catalogs, invoices, photographs, newspaper advertisements and written statements, but this does not mean that every piece of such evidence will include information concerning all four aspects that the evidence of genuine use should concern, namely, the place, time, nature and the extent of use.

In other words, the accumulation of evidence may make it possible to establish the necessary facts, even though each piece of evidence, when taken individually, would be insufficient to prove its truthfulness.

In the discussed case, the owner of the questioned mark had to prove its genuine use from November 4, 2014 to November 3, 2019. Both professionals and the general public were considered to be the relevant public for the goods in Class 25. These goods are everyday consumer goods, which are usually not very expensive, and therefore the level of attention of the relevant consumers will be average.

The questioned mark did not appear in any evidence other than the invoices, and in particular, there was no solid evidence that it was placed on the said goods. Under these circumstances, the Office concluded that the use of the disputed mark on invoices could not prove that it was actually used as a trademark.

In the present case, the challenged mark appeared only on invoices, while, as the trademark owner admitted, the sign that appeared on the shoes and other evidence submitted did not correspond to the challenged mark as registered. The owner stated that the only change was in the scope of the type of letters, which were more stylized, and the addition of small graphic elements as a complement to the word element “BE” (a small heart), as well as the removal of the square, which was the element of the mark as registered.

The Office stated that the subject Trademark, which had been registered as:     , was used in connection with footwear in the following forms:    and  .

According to the provisions of Article 18(1)(a) of the EUTMR, the use of a mark in a form other than the registered one still constitutes the use of the mark, as long as the differing elements do not change the distinctive character of the mark.

The purpose of the aforementioned provision is to avoid imposing a strict correspondence between the used form of the trademark and the form in which the mark was registered, and to allow its owner to make changes to the sign that, without altering its distinctive character, allow it to be better suited to marketing and promotional activities for a particular product or service.

EUIPO examined in the subject case whether the differences between the sign in its registered form and the form in which it was used changed the distinctive character of the mark. The sign as registered was characterized by the word elements “TO” at the top and “BE” at the bottom written in standard capital letters inside a square. The signs as used had only one letter in standard typeface – the letter “B”. The initial element “TO” was so heavily stylized and altered that consumers could hardly recognize the word “TO” in it. The symbol more resembled a geometric representation of lines and shapes than the letters of the Latin alphabet. Moreover, the structure of the marks as used was also completely different from that of the registered mark. The challenged mark had two word elements written one below the other, in a vertical structure. The marks in use had two elements that appeared one next to the other, and thus had a horizontal structure. The letter “E” was also stylized, whose gradually lengthening horizontal lines were noticeable to the relevant public.

Given the fact that the registered mark is dominated by its “TO” and “BE” elements, while the signs which have been used are characterized by the stylization, which weakens (if not hinders) the perception of the constituent letters of the signs in question, the Office considered that these striking visual differences alter the distinctive character of the signs being used in comparison to the registered mark.

Such significant visual differences justify the conclusion that the marks as used changed the distinctive character of the registered mark and could not therefore be considered equivalent signs.

According to the trademark owner, the graphic alterations of the signs used were insignificant and retained the word elements “TO BE.” The Office found that the styling of the first element as used could not be considered equivalent to the letters “TO” contained in the registered mark. Also, the overall layout of the signs used differed from the mark as registered. As a result, the distinctive character of the mark was altered, and consequently, Article 18(1)(a) of EUTMR did not apply.

Since the owner of the mark failed to prove genuine use of the challenged sign in the form in which it was registered, or in a permissible variant in accordance with Article 18(1)(a) of the EUTMR, the mark was declared to have lapsed.