The tenth recital of Council Regulation (EC) No. 207/2009 on the Community Trade Mark affirms the classic mantra of IP professionals around the world — that you have to use your trade mark, or you will lose it (or at least it will become vulnerable to being cancelled for non-use).
The recital states there is no justification for protecting community trade marks or, as against them, any trade mark which has been registered before them, except where the trade marks are actually used. So what does this actually mean?
The General Court in Case T‑258/13 has recently issued a decision in which Matratzen Concord GmbH applied to cancel a registration for the word mark ARKTIS that was owned by KBT & Co. Ernst Kruchen agenzia commerciale sociétá in accomandita.
At first instance, the Cancellation Division of OHIM revoked the registration for ‘pillows, sleeping bags’ in class 20 but rejected the application for revocation in relation to ‘bedding, bed blankets’ in class 24. The Board of Appeal confirmed this decision stating that KBT could show genuine use of its mark for the goods in class 24. KBT submitted evidence of the use of the mark ARKTIS in the form of its ARKTIS LINE logo, featuring diagonal bands sewn at the corners of its products. The mark appeared on products sheets, invoices, delivery notes and sales data from licensees.
Matratzen appealed, claiming that KBT had failed to show genuine use of the mark as registered in relation to the goods in class 24. The General Court rejected the appeal and confirmed the decision of the Board of Appeal.
The decision of the General Court includes useful guidance on the requirements for demonstrating genuine use of a CTM registration. The Court affirmed the settled case law that trade mark use, if it is to be regarded as genuine, must be use of a mark in connection with its essential function as a commercial indicator of the origin of the goods, with the purpose of creating or maintaining a market share for the products it covers. The Community Trade Mark system does not grant protection where the use of the mark is only ‘token’.
The Court stated that use, in order to be genuine, need not be quantitatively significant if the evidence shows the extent, duration and nature of the use. It is also important to take into account that the nature of the goods and services in question is relevant. In the present case, KBT's use of the ARTKIS mark met these criteria.
The Court also followed the decisions in Cases T-19/99 Companyline and T-273/10 Olive Line in which it had been decided that the use of the term ‘LINE’ with a trade mark would be recognised as referring to a product line. The use of the ARKTIS LINE Logo, therefore, amounted to use of the word ARKTIS on its own.