If registered trademarks are not seriously used, they can lapse. This is also shown by a judgment of the General Court of the European Union (GCEU) dated June 8, 2022 (Case No.: T-26/21, T-27/21, T-28/21).
Trademarks hold a high value. It is even more important to have them registered and thus protected. However, trademark protection can be lost if the owner does not use the trademark, says attorney Michael Rainer, MTR Rechtsanwälte.
A major technology company also had to learn at the GCEU that trademark protection expires due to non-use. The company had registered a wordmark as a European Union trademark for certain computer products between 1997 and 2005.
In 2016, a competitor filed applications for the lapse of the registered trademarks with the European Union Intellectual Property Office (EUIPO) in three cases. The applications were based on the claim that the trademark had not been seriously used for the relevant years within an uninterrupted period of five years – between 2011 and 2016. The EUIPO then declared the trademark lapsed.
The original trademark owner resisted and filed a lawsuit with the GCEU. The company argued that the EUIPO had not considered the high level of attention of the relevant circles when assessing the serious use of the trademark. The company also attempted to prove this with sales figures.
Without success. The company did not demonstrate that the trademark was seriously used for the relevant goods in the period between 2011 and 2016, according to the GCEU. Although the company submitted, among other things, press articles proving the success of the advertising campaign with the wordmark, these articles were older and not relevant for the period in question.
The judgment shows that trademark owners must prove that they also use a trademark to ensure continued protection. Registering a trademark is not sufficient for trademark protection; it must also be seriously used. According to the BGH case law, the burden of proof lies with the trademark owner.
Attorneys experienced in trademark law can provide advice.
