If registered trademarks are not used seriously, they can lapse. This is also demonstrated by a judgment of the General Court of the European Union (GC) dated June 8, 2022 (Case No.: T-26/21, T-27/21, T-28/21).
Trademarks represent considerable value. It is all the more important to register them and thus protect them. However, trademark protection can be lost if the owner does not use the trademark, explains the law firm MTR Rechtsanwälte.
A major technology corporation also experienced that trademark protection lapses due to non-use at the GC. Between 1997 and 2005, the company had registered a word mark as an EU trademark for certain computer products.
In 2016, a competitor filed applications in three cases with the European Union Office (EUIPO) for the lapse of the registered trademarks. He justified the applications by stating that the trademark was not seriously used for the relevant years within an uninterrupted period of five years – between 2011 and 2016. Consequently, the EUIPO declared the trademark to have lapsed.
The original trademark owner contested this and filed a lawsuit at the GC. The company argued that the EUIPO did not consider the high level of attentiveness of the relevant public in assessing the serious use of the trademark. The company also tried to substantiate this with sales figures.
To no avail. The company failed to demonstrate that the trademark was seriously used for the relevant products during the period between 2011 and 2016, according to the GC. Although the company submitted, among other things, press articles proving the success of the advertising campaign with the word mark, these articles were older and irrelevant for the relevant period.
The judgment shows that trademark owners must prove that they are using a trademark in order to continue protecting it. It is not enough to register a trademark for trademark protection, it must also be used seriously. According to the case law of the Federal Court, the burden of presentation and proof for this lies with the trademark owner.
Experienced lawyers in trademark law can provide advice.
