ELZABURU Blog - Industrial and Intellectual Property

Tag Archives: European Union

FRUTARIA decision: General Court considers proof of use where trademark was assigned during relevant period

On 13 October 2021the General Court issued its judgment in Schneider v European Union Intellectual Property Office (EUIPO) (Case T-12/20), recalling relevant aspects of the proof of use of a trademark subject to a revocation action. This includes findings concerning the validity of the evidence provided by a former proprietor when the trademark has been subject to an assignment, use as a trademark, distinctiveness and use for a sub-category of goods.


On 22 May 2007 Frutaria SAT 9413 filed an application for registration of the figurative trademark FRUTARIA with the EUIPO in connection with goods and services in Classes 29, 31, 35 and 39. Registration of this trademark was granted on 27 April 2010 under EU trademark No 5922885. This trademark was subject to an assignment and was transferred on 14 April 2016 to Frutaria Comercial de Frutas y Hortalizas SL.

On 17 May 2017 Markus Schneider filed an application for revocation of the EU trademark FRUTARIA. Accordingly, the trademark holder was obliged to prove use of the trademark in connection with all the relevant goods and services for the period between 19 May 2012 and 18 May 2017 – the first part of the relevant period was thus prior to the assignment, while the second part was after.

The trademark holder submitted to the EUIPO several items of evidence for the purpose of establishing use of the contested trademark. The Cancellation Division partially upheld the application for revocation, but rejected it in respect of certain goods and services in Classes 29, 31 and 35.

Schneider appealed the decision. In a decision dated 8 October 2019, the First Board of Appeal partially upheld the appeal, maintaining the registration of the trademark for certain goods and services in Classes 29, 31 and 35.

Schneider appealed to the General Court, relying on a single plea in law alleging:

  • lack of use of the contested trademark by the proprietor;
  • lack of use as a trademark for the goods and services concerned;
  • failure to use the mark in its registered form; and
  • insufficient use of the mark for the goods and services at issue.

The General Court considered that the assessment of the First Board of Appeal was right and dismissed the action in its entirety.


The General Court recalled that the transfer of a trademark cannot lead to its new proprietor being deprived of the opportunity to adduce proof of genuine use in the course of the relevant period during which it was not the proprietor of the mark: although Article 15(2) of Regulation 207/2009 states that use of a trademark by a third party with the proprietor’s consent amounts to use by its proprietor, in this case, use of the trademar was made directly by the company which owned the trademark at the time in question.

As regards genuine use of a trademark where the trademark is used in accordance with its essential function, the court emphasised that the fact that a word element is used as a company’s trade name does not preclude its use as a trademark to designate goods or services. Moreover, it considered that the supporting evidence submitted to the EUIPO (images of the boxes generally used for transporting fresh fruit and vegetables) can be used as additional elements for confirming genuine use of the trademark.

The court dismissed Schneider’s comments on the failure to use the trademark as it was registered: while there were notable differences between the trademark as registered and the trademark as used during the relevant period, those differences were not capable of significantly altering the distinctiveness of the mark. This conclusion was based on the finding that the element ‘frutaria’ was still the dominant and most distinctive element of the signs (as depicted below), and that the amendments were to be considered ancillary, as they would be perceived merely as a modernisation of the sign.

Lastly, the court found that the fact that the proof of use filed with the EUIPO was furnished only for the sale of products to a single customer did not make it possible a priori to rule out its genuineness. Accordingly, it accepted that the one-off sale of dried plums to a single customer was sufficient to establish genuine use for the category of “dried fruits” in Class 29.


This judgment sheds light on the consideration that must be given to the proof of use that a trademark holder can submit in a revocation action when the trademark has been assigned during the relevant period established by Articles 15(1) and 51(1) of Regulation 207/2009. It also provides valuable guidance on the court’s criteria as to the requirement of use of a trademark as registered, notwithstanding the modernisation and alteration of non-essential elements, and on the suitability of small sales for establishing genuine use in connection with certain categories of goods.

This article first appeared on WTR Daily, part of World Trademark Review, in October, 2021. For further information, please go to www.worldtrademarkreview.com

Author: Sara Navarro Joven

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Actress and singer Miley Cyrus is entitled to use name as a trademark

Miley Cyrus

On 16 June 2021 the General Court issued its decision in Smiley Miley Inc v European Union Intellectual Property Office (EUIPO) (Case T‑368/20).


In 2014 Smiley Miley Inc – a company of world-famous artist Miley Cyrus – filed an application with the EUIPO for the registration of MILEY CYRUS as an EU trademark for goods and services in Classes 9, 16, 28 and 41.

Cyrus Trademarks Ltd opposed the application on the ground that it was confusing similar with the earlier EU trademark depicted below for goods in Classes 9 and 20:


In 2018 the EUIPO accepted the opposition in part on the ground that there was a likelihood of confusion between the mark applied for and the earlier mark in respect of most of the goods and services covered by the mark MILEY CYRUS.

That same year, the EUIPO dismissed an appeal filed by Smiley Miley, finding that the signs at issue were visually and phonetically similar to an average degree and that the conceptual comparison was neutral. Smiley Miley lodged an appeal with the General Court.


Having conducted an in-depth analysis of the case, the General Court annulled the EUIPO’s decision, thus granting the EU trademark MILEY CYRUS.

The General Court focused its decision on two main issues.

First, the court addressed the alleged error made by EUIPO when finding that the element ‘Miley’ (first name) in the mark applied for would be perceived as a less dominant element in comparison with the element ‘Cyrus’ (surname).

The court held that, although there is case law indicating that surnames have, as a general rule, a more distinctive character than first names, it is necessary, however,

to take account of factors specific to the case and, in particular, of the fact that the surname concerned is unusual […], which is likely to have an effect on that distinctive character […] and to take account of whether the person who requests that his or her first name and surname, taken together, be registered as a trademark is well known […].

Bearing in mind that (i) neither ‘Miley’ nor ‘Cyrus’ is a common first name or surname; (ii) the mark applied for refers to the first name and surname of a world-famous artist; and (iii) the artist is known by that first name and that surname taken together, the court stated that those two elements were equally distinctive.

Second, the court held that the EUIPO committed an error when comparing the signs conceptually and considering that the name of the reputed artist Miley Cyrus had no conceptual meaning.

The court underlined that:

a conceptual comparison remains possible where the first name or the surname in question has become the symbol of a concept, due to, for example, the celebrity of the person carrying that first name or surname […].

The well-known character of the American singer and actress meant that it was highly unlikely that consumers would not associate the mark MILEY CYRUS with the name of the artist.

Consequently, the court concluded that, although the marks were similar, the conceptual differences between them were such as to counteract the visual and phonetic similarities.


The judgment confirms, on the one hand, that names and surnames may have a conceptual meaning and, on the other, the possibility of ‘neutralising’ any visual and phonetic similarities where it is established that the relevant public assigns to one of the signs a clear and specific meaning that can be grasped immediately.

Considering that the courts have followed this same line over the past few years, the decision does not represent a turning point in case law. Nevertheless, it reinforces the protection enjoyed by celebrities through the registration of trademarks, bearing in mind their reputation and worldwide recognition as a result of appearances in the media.

This article first appeared on WTR Daily, part of World Trademark Review, in june, 2021. For further information, please go to www.worldtrademarkreview.com.

Author: Soledad Bernal

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Commission welcomes the political agreement on Horizon Europe

Horizon Europe 2021-27

Commission welcomes the political agreement between the European Parliament and the Council on Horizon Europe, the future EU research and innovation programme

Despite the uncertain times we have been living through over the past year, it seems that the European Union’s commitment to promoting industrial leadership in Europe remains intact.

As we already commented in the article we posted on this subject, coinciding with the end of the Horizon 2020 programme, the European Commission is working on the launch of the Horizon Europe programme, with the same aim as Horizon 2020 when it was launched, namely, to support innovation activities in Europe and drive scientific excellence. It has a budget of 95.5 billion euros for the period 2021-2027, making it the largest ever transnational programme in support of research and innovation.

banderas europeas, edificio, comisión europea


Following months of negotiations, on 11 December 2020 the institutions of the European Union reached a politicial agreement on the Horizon Europe programme. While the agreement is pending formal approval by the European Parliament and the Council, the Commission has been preparing its implementation in order to start the programme as soon as possible after publication of the provisional agreement in March and April 2019.

According to the information included in the provisional agreement signed in March, Horizon Europe is based on three main pillars: promoting scientific excellence, supporting projects aimed at developing technological solutions to challenges in critical areas such as health, climate change or mobility, and fostering innovation activities throughout the European Union. With the agreement about to be formally approved, the measures established by Horizon Europe to drive progress have now been defined:

  • Creation of the European Innovation Council (EIC), a one-stop-shop for developing the most promising ideas and providing support to the most innovative SMEs, which is currently in a pilot phase and will complement the European Institute of Innovation and Technology (EIT).
  • Implementation of the EU missions, aimed at tackling issues that affect our daily lives, from the fight against cancer to adaptation to climate change and care for the environment.
  • A streamlined approach to European partnerships, as well as encouraging wide participation of partners from the public and private sectors.
  • Strengthening international cooperation by granting the opportunity to cooperate with countries outside the EU (third countries) with good capacity in science, technology and innovation.
  • Promoting open science by ensuring open access to publications and research data.
  • Encouraging participation and reducing the innovation gap in Europe, approving a wide spectrum of measures to support countries with lower innovation performance, build up centres of excellence and facilitate collaborative links.
  • Increasing the impact of R&D&I by creating synergies with other European Union programmes and policies such as InvestEU, Erasmus+, EU Cohesion Policy, Digital Europe, European Structural and Investment Funds, among others.
  • Increasing legal certainty and reducing administrative burden for beneficiaries and programme administrators.

According to the press dossier published by the European Commission, the implementation of these measures is expected to create 300,000 jobs by 2040, of which 40% will be highly skilled jobs, and potentially generate up to 11 euros of GDP gains over 25 years for each euro invested in R&I. Moreover, it has been calculated that more than 35% of Horizon Europe spending will contribute to climate objectives.

Notwithstanding the formal approval of the agreement and the measures that are ultimately adopted, there can be no doubt that this new programme, even more ambitious than its predecessor, will help to establish an innovation ecosystem in Europe, and Spanish companies investing in R&D&I should seek to take advantage of the benefits and opportunities.

In this regard, it is essential to approach the calls for proposals that are published in the framework of the Horizon Europe programme with expert assistance and planning, providing greater guarantees for companies to be able to take advantage of this kind of opportunity. As part of our commitment to support Spanish companies and institutions in their innovation activities, we shall monitor and keep up to date with the news published on Horizon Europe and the first calls for proposals launched under the programme.

Other information of interest may be found below:


Authors: Alba Mª López and Marina Martínez

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European Commission prepares Horizon Europe: the future framework programme for research, development and innovation in the EU

banderas europeas, edificio, comisión europea

Horizon 2020 (H2020) is the programme for funding research and innovation projects in the European Union for the period 2014-2020.

Coinciding with the end of the H2020 programme and with the same aim (to promote industrial leadership in Europe and drive scientific excellence), the European Commission is now preparing its follow-up programme, Horizon Europe. This new programme will cover the period 2021-2027 and it promises to be the largest ever programme of funding for research, development and innovation

banderas europeas, edificio, comisión europea


What is Horizon Europe?

Horizon Europe is a funding programme aimed at supporting research, development and innovation projects which advance a series of common objectives for the entire European Union. These objectives are based on the three pillars of the Horizon Europe programme, which are the following:

    • Excellent Science. Firstly, the programme aims to promote “open science”, offering support to researchers through grants, and funding projects defined and driven by researchers through the European Research Council and the Marie Sklodowska-Curie Actions (MSCA).
    • Global challenges and European industrial competitiveness. Secondly, the programme aims to support, through the Joint Research Centre (JRC), projects that develop technological solutions to challenges in critical areas such as health, climate change, mobility, food and natural resources, energy, civil security, digital, industry and space, etc. This means that projects will no longer be assessed solely in terms of excellence. The development projects put forward in the calls for proposals must have a clear social impact.
  • Innovative Europe. Finally, it aims to foster and support innovation activities that bring together business, research and education through the European Innovation Council (EIC) and the European Institute of Innovation and Technology (EIT) . These innovation activities will be exploited in connection with so-called “missions”, which are general global challenges (for example, cancer, soil health and food, climate-neutral and smart cities, healthy oceans, seas, coastal and inland waters, and adaptation to climate change). Funding will thus be provided for projects which could have an impact on some of these areas.

Click here to access the full document on the Horizon Europe Programme 2021-2027.


Authors: Alba Mª López and Marina Martínez

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Proposal for EU Digital Services Act published

Imagen de compras online

On 15 December 2020, the European Commission finally published the long-awaited proposal for a Digital Services Act, as well as the proposal for a regulation on digital markets (link to related article).

These new regulations:

  1. provide stronger protection for consumers and their fundamental rights online;
  2. establish high standards of transparency and a clear accountability framework for online platforms; and
  3. will foster innovation, growth and competitiveness in the single market.
Imagen de compras online  

The regulation on digital services, according to the press release published, will introduce a series of new, harmonised EU-wide obligations for digital services, carefully graduated on the basis of the size and impact of those services, such as:

  • rules for removal of illegal goods, services or content online;
  • safeguards for users whose content has been wrongfully removed by platforms;
  • new obligations for platforms to take risk-based action to prevent abuse of their systems;
  • wide-ranging transparency measures, including measures relating to online advertising and to the algorithms used to recommend content to users;
  • new powers to scrutinise how platforms work, including facilitating researchers’ access to key platform data;
  • new rules on traceability of business users in online marketplaces, to help track down sellers of illegal goods or services;
  • an innovative cooperation process among public authorities to ensure effective enforcement across the single market.

Platforms that reach more than 10% of the EU’s population (45 million users) are considered systemic in nature and are subject not only to specific obligations to control their own risks, but also to a new oversight structure. This new accountability framework will be comprised of a board of national digital services coordinators, with special powers for the Commission in supervising very large platforms, including the power to sanction them directly.

The European Parliament and the Member States will now discuss these proposals from the Commission in the ordinary legislative procedure. Once these rules are adopted, they will be directly applicable across the EU. We will have to wait to see what amendments are made during the parliamentary procedure. In any case, this effort to regulate the digital world is certainly the right way forward.


Author: Juan José Caselles

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