In this post, I would like to share some thoughts on the mandatory use of registered trademarks, in light of the content of several recent rulings handed down by the judicial bodies that make up the Court of Justice of the European Union.
In the judgment of the Court of Justice dated October 22, 2020 (C-720/18) raised in connection with the use of FERRARI’s “Testarossa” (figurative) trademark, my attention was drawn to a reference to a treaty (the existence of which, frankly, I was unaware of) signed as far back as 1892 between Switzerland and Germany. This treaty—which, according to the ruling, is still in force—stipulates that Any adverse consequences that, under the laws of the Contracting Parties, result from the nonuse of a trademark for a certain period of time shall not apply if the trademark has been used in the territory of the other Contracting Party (Art. 5.1).
Based on this circumstance, the use of a German trademark in Switzerland will be valid for proving the use of a German national trademark, which, therefore, cannot be revoked even if it is not used on German territory. The resulting paradox stems from the fact that, as the ruling points out, if that same German trademark is used to oppose a new application for a European Union trademark, such opposition will not succeed if the applicant for the European Union trademark requests that proof of use of the German trademark be provided, since that use does not take place within the territory of the European Union.
Another ruling I would like to discuss is that of the General Court dated September 23, 2020 (T-601/19) which ruled on a case involving opposition proceedings between the European Union trademark application “in·fi·ni·tu·de” and the earlier Spanish trademark “infinite,” both intended to distinguish wines. As part of those proceedings, the opponent was required to prove use of its trademark, for which it submitted various documents demonstrating that the “infinite” trademark had been used in connection with the export of wines to Canada, Puerto Rico, and the United States.
Once the use of the “infinite” trademark was admitted, the Court proceeded to assess whether there was a likelihood of confusion between the conflicting trademarks; in this regard, the Court began by determining that the relevant territory was Spain and the relevant public consisted of the general public, whose level of attention is average. The truth is that both of these circumstances may require some qualification, since, given that the trademark is Spanish, it seems appropriate that the relevant territory be Spain; however, upon closer examination, it must be acknowledged that the product is sold and consumed outside the EU, so, in the reality of the market, the likelihood of confusion—at least as assessed from the perspective of the general public—would arise in those countries, since that “general public” would consist of consumers in Canada or the United States.
Logically, such a target audience is not appropriate for analyzing a trademark conflict arising within the European Union. In cases involving use established through the export of the product to third countries, it seems more logical to assume that the relevant audience should consist of professionals involved in the import or export of the products; and such an assessment must be conducted by determining, in this case, the level of attention paid by these professionals.
The last of the rulings I would like to report on is the one handed down by the General Court on October 28, 2020 (T-583/19). This case concerns the FRIGIDAIRE trademark, which was partially revoked by the EUIPO because sufficient use could not be demonstrated for certain products (washing machines, dishwashers, etc.).
The trademark owner had submitted evidence of the trademark’s use to distinguish those household appliances, including, among other evidence, proof of the sale of such products for use at U.S. military bases in Belgium and Germany. However, the General Court held that in these cases there is no use within the territory of the European Union, since the areas occupied by such military bases are not part of that territory; therefore, as there is no use of the FRIGIDAIRE trademark in the European Union, it must be canceled for those products.
As can be seen, the cases addressed in the cited rulings are somewhat unusual and serve as further evidence that, when applying trademark law , any assessment must be made on a case-by-case basis, taking into account the specific circumstances of each case.
Author:Jesús Gómez Montero, Former Partner at ELZABURU and Member of the Advisory Committee of the Alberto Elzaburu Foundation