Use obligation for registered trademarks: What are the requirements for genuine use?

But what constitutes genuine use? And how can it be proven? A recent decision by the General Court of the European Union, which resulted in the partial cancellation of the registered trademark TES, provides a clear outline of the requirements for genuine use and how it is assessed.

The obligation of genuine use
A trademark becomes subject to a use obligation five years after its registration. This means that the trademark can be cancelled due to non-use if a third party requests its cancellation. In such case, the trademark owner must provide evidence that their trademark has indeed been used for the registered goods and services within the relevant territory.

In a decision by the General Court on January 22, 2025 (ECLI:EU:T:2025:48), a request was filed to cancel the EU trademark TES due to non-use. The trademark had been registered since 2006 for various types of measuring instruments.

Whether a trademark is used “genuinely” depends on several relevant factors. The evidence presented must demonstrate that the trademark has been used commercially and that efforts have been made to acquire or maintain market share.

Requirements for genuine use
When assessing genuine use, the evidence provided must relate to the following factors:

• Place: The trademark must be used within the territory where it is protected.
• Time: The evidence must show that the trademark was used in the five-year period preceding the cancellation request.
• Extent: It must be demonstrated that the trademark owner has made efforts to establish a substantial commercial position in the relevant market. The trademark must be used for the registered goods or services that are either already available on the market or about to be launched, with preparations being made to attract customers.
• Nature: The trademark must be used in accordance with its function, namely to distinguish goods or services from those of other businesses. Additionally, it must be used as registered and in connection with the goods and services for which it is registered.
   

Key factors in assessing the evidence include the intensity of use, sales volume, promotional investments, the characteristics of the goods and services , and the sector in which the goods and services are offered. Regarding sales volume, it is important to note that there is no specific quantitative threshold that automatically proves genuine use.
 

What we can learn from the TES Case

The General Court decided on how the lower instance, the Board of Appeal of the European Union Intellectual Property Office (EUIPO) assessed the evidence of use provided by TES. The Court found that the initial assessment had placed too much emphasis on the sales figures of certain TES products. The evaluation did not sufficiently consider other relevant factors, such as product distribution, catalogue dissemination, marketing efforts, and the specialized nature of the goods.

For example, TES provided evidence showing that 93 insulation testers were sold in the EU. The initial decision had deemed this number too small, concluding that genuine use had not been demonstrated. However, the General Court disagreed, stating that while 93 units might be a small number, it was not insignificant. The Board of Appeal should not have automatically concluded non-use, as there is no fixed quantitative threshold for proving genuine use.

The Board of Appeal should have analysed the type of goods and the market in which they were offered. Based on this, the Board could have assessed whether the sales volume was sufficient to demonstrate genuine use.

Another key issue was whether the use of the trademark for thermometers with a printing function could be considered use for 'printers', and whether thermometers with data recording functions fell under 'data loggers'. TES submitted product packaging, catalogues, and statements from the company’s director regarding sales and distribution as evidence.

In the assessment, the function and intended use of the product are crucial. The Court decided that the printing function of the thermometers was too limited to classify them as printers. Additionally, only three thermometers with a printing function were sold, which was deemed insufficient to demonstrate genuine use for printers.

For data loggers, the situation was different. The trademark owner successfully contested the claim that the submitted data loggers were merely thermometers with data storage capabilities. A data logger is an electronic device that records measurement data and therefore clearly falls within the scope of the registered goods. Moreover, 29 units were sold within the relevant timeframe, which, given the nature of the market, was not considered negligible. As a result, the Court decided that genuine use had been demonstrated for data loggers.

When analysing genuine use, factors such as the product’s price must be considered. Expensive products typically generate lower sales volumes because they are not everyday purchases. Additionally, the product may target a very specific market sector, which also affects its sales. It is also possible that, despite being launched, the product has not yet gained significant traction, despite considerable marketing efforts. Such circumstances are often reflected in the investments made in promotion and sales.

Conclusion
When the genuine use of a trademark is at issue, it is crucial to present all submitted evidence in a way that provides a most comprehensive picture of the investments and use of the trademark. It is also important, when preparing and submitting evidence of use, to clearly explain why the evidence demonstrates genuine use. The totality of the evidence must clearly show that the trademark owner has made a serious attempt to enter the market or maintain their market position. 

The decision of the General Court in the TES case highlights that the assessment of genuine use extends beyond sales figures alone. Sales figures, when combined with other evidence such as product packaging, labels, catalogues, price lists, sent quotations, witness statements, news articles, activities on websites and social media, can collectively provide a clear overview of the trademark owner's efforts.

 

[1] No worries, this was resolved on appeal. The cancellation of the BIG MAC trademark registration No. 000062638 does not apply to food products prepared with meat products; meat sandwiches in Class 29 and sandwiches; meat sandwiches in Class 30.