I would like to share my thoughts here on the issue of mandatory use of a registered trademark, in the light of the content of some recent decisions handed down by the constituent courts of the Court of Justice of the European Union.
Based on this circumstance, use of a German trademark in Switzerland shall be valid for the purpose of attesting to use of a German national trademark which, therefore, cannot be revoked, even if it has not been used within the territory of Germany. The paradox that arises is that, as pointed out in the judgment, in the event that the same German trademark were used as a basis for opposing a new European Union trademark application, the opposition would fail if the applicant were to ask for proof of use of the German trademark, given that the use has not been made in the territory of the European Union.
Another judgment on which I would like to comment is the one handed down by the General Court on 23 September 2020 (T-601/19) ruling on the case relating to opposition proceedings involving the European Union trademark application “in·fi·ni·tu·de” and the earlier Spanish trademark “infinite”, both covering wines. In said proceedings, the opponent was required to attest to use of its trademark. To this end, various documents were submitted showing that the trademark “infinite” had been used in relation to exports of wines to Canada, Puerto Rico and the United States.
Having accepted the use of the trademark “infinite”, the Court assessed whether there was a likelihood of confusion between the trademarks in dispute. In this regard, the Court took as its starting point that the relevant territory was Spain and the relevant public was the general public, whose level of attention was average. The truth is that there are nuances to both aspects, given that, since the trademark is Spanish, it would indeed seem to be correct that the relevant territory is Spain. However, if we consider the matter in detail, it must be acknowledged that the goods are sold and consumed outside the EU. Therefore, based on the reality in the marketplace, the likelihood of confusion, at least from the perspective of the general public, would arise in those countries, as said “general public” would be Canadian or US consumers.
Logically, that relevant public is not valid for the purpose of analysing a conflict between trademarks arising in the European Union. In such cases where use is demonstrated on the basis of exports of the goods to third countries, it would seem more logical to think that the relevant public should consist of the professionals who carry out the import or export of the goods, in which case the pertinent analysis should be carried out by assessing the level of attention of those professionals.
The last of the judgments on which I wish to comment is the judgment issued by the General Court on 28 October 2020 (T-583/19). This case concerns the trademark FRIGIDAIRE, which was partially revoked by the EUIPO, since sufficient use was not demonstrated for certain goods (washing machines, dishwashers, etc.).
The owner had filed proof of use of the trademark in respect of those electrical appliances, submitting, among other evidence, material referring to sales of such goods for use on US military bases in Belgium and Germany. The General Court held that in such cases there is no use in the territory of the European Union given that the areas occupied by such military bases do not form part of that territory and, therefore, since there is no use of the trademark FRIGIDAIRE in the European Union, it should be revoked in respect of those goods.
As may be seen, the cases concerned in the cited judgments are somewhat unusual and they are a further indication that, when applying trademark law, any assessment made must be based on the individual circumstances of the specific case.
Author: Jesús Gómez Montero. Former Partner of ELZABURU and Member of the Advisory Board of the Alberto Elzaburu Foundation
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