The proceedings related to the trademark "THE STANDARD" registered, among other things, for hotel and ancillary services, like restaurants, bars, cafés, etc. Those services were provided exclusively in the United States.
Regulation 2017/1001 on the European Union trade mark provides that if, within a period of five years following registration, the proprietor has not put the EU trade mark to genuine use in the Union in connection with the goods or services in respect of which it is registered, the EU trade mark shall be subject, in principle, to revocation.
In the present case, at the request of a competitor of the proprietor of the trademark "THE STANDARD", it was revoked by the Cancellation Division and this decision was upheld by the Board of Appeals. The proprietor of the trademark "THE STANDARD" thus referred the matter to the General Court.
Legal reasoning of the General Court
Genuine use of a trade mark aims both to guarantee the identity of the origin of the goods or services for which it is registered and to create or preserve a market for those goods or services.
According to the General Court’s case law (see CJEU, 19 December 2012, Leno Merken BV v. Hagelkruis Beheer BV, C 149/11, EU:C:2012:816, §§ 36 to 38 and 58 and GC, 7 November 2019, Intas Pharmaceuticals Ltd v. European Union Intellectual Property Office, T 380/18, EU:T:2019:782, § 74), the use of an EU trade mark in third States cannot be taken into account for the purposes of establishing genuine use of that mark in the Union.
Therefore, the Cancellation Division and the Board of Appeals both considered that, since the services under the trademark "THE STANDARD" were solely provided outside of the European Union, there could not be any genuine use in the Union.
The General Court, however, nuanced this view and drew a distinction between, on the one hand, the provision of services and, on the other hand, the acts of use of the trademark seeking to promote it, only the latter being relevant for the purposes of establishing genuine use of the trademark and which cannot be solely limited to the acts of provision of the services it covers.
While the hotel services were provided exclusively in the United States, in the present case, the proprietor of the trademark provided a considerable amount of evidence, such as advertisements, promotional campaigns aimed at customers located in the European Union, reservations made directly by customers and through travel agencies situated in the European Union, invoices addressed to customers resident in the European Union, a bookings portal accessible to European Union customers via the proprietor’s website, figures issued by Google Analytics software concerning traffic on said website, etc.
This advertising made inside the Union and directed at European clients was deemed as sufficient for the purposes of establishing genuine use of the trademark, even though those services were provided solely in the United States.
As far as product trademarks are concerned, the affixing of a trademark in goods purely destined to import or export is still deemed as genuine use of said trademark.
This conclusion was not obvious for service trademarks, since they may only be provided where the consumer is located and since they cannot be imported or exported. For the first time, the General Court of the European Union considered that the location of the use of the trademark may be distinct from the location of the provision of services.
This judgment is of practical significance for extra-European businesses which, without having to provide services in the European Union, may nevertheless create a market there, through a European trademark.