If registered trademarks are not used seriously, they may lapse. This is also shown by a judgment of the General Court of the European Union (GC) of June 8, 2022 (Case Nos.: T-26/21, T-27/21, T-28/21).
Trademarks represent a high value. It is all the more important to register and thus protect them. However, trademark protection can be lost if the owner does not use the trademark, says Rechtsanwalt Michael Rainer, MTR Rechtsanwälte.
That trademark protection lapses due to non-use has also been experienced by a major technology corporation at the GC. The company had registered a word mark as a European Union trademark between 1997 and 2005 for certain computer products.
In 2016, a competitor filed applications with the European Union Intellectual Property Office (EUIPO) in three cases 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 subsequently declared the trademark lapsed.
The original trademark owner resisted this and filed a lawsuit with the GC. The company argued that the EUIPO had not considered the high level of attention of the relevant public in assessing the serious use of the trademark. The company also attempted to substantiate this with sales figures.
Without success. The company failed to demonstrate that the trademark was seriously used for the relevant goods between 2011 and 2016, according to the GC. Although the company presented press articles proving the success of the advertising campaign with the word mark, these articles were older and not relevant for the period in question.
The judgment shows that trademark owners must demonstrate that they also use a trademark in order for it to remain protected. It is not enough to register a trademark for trademark protection; it must also be used seriously. The burden of presentation and proof for this lies with the trademark owner, according to the case law of the BGH.
Experienced Rechtsanwälte in trademark law can provide advice.
