If registered trademarks are not used seriously, they can lapse. This is also shown by a judgment of the General Court of the European Union (GC) on June 8, 2022 (Case No.: T-26/21, T-27/21, T-28/21).
Trademarks represent a high value. It is therefore all the more important to have them registered and thus protected. However, trademark protection can be lost if the owner does not use the trademark, explains the commercial law firm MTR Rechtsanwälte.
That trademark protection lapses due to non-use was something a large technology company also experienced at the GC. The company had registered a word sign as an EU trademark for certain computer products between 1997 and 2005.
In 2016, a competitor submitted three applications to the European Union Intellectual Property Office (EUIPO) for the lapse of the registered trademarks. The applications were based on the fact 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 to have lapsed.
The original trademark owner resisted this and filed a lawsuit with the GC. The company argued that the EUIPO did not consider the high level of attention of the relevant public in assessing the serious use of the trademark. The company also tried to substantiate 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 GC. Although the company had 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 relevant period.
The judgment shows that trademark owners must prove that they are also using a trademark in order for it to remain protected. For trademark protection, it is not sufficient to register a trademark; it must also be seriously used. According to the Federal Court of Justice’s case law, the burden of diligence and proof lies with the trademark owner.
Lawyers experienced in trademark law can provide advice.
