?TO BE OR NOT TO BE? when it comes to trademarks, or what should be remembered to guarantee genuine use of a trademark [Article on IP-Blog.pl]

Author: Joanna Rafalska, Polish and European Trade Mark and Design Attorney

When a party is considering to apply for trademark registration, it is important to remember about the obligation that rests upon the right holder to put the mark to genuine use. What is essential, the use will only be recognized as genuine, if a number of specific criteria are fulfilled. The above issue was the subject of a decision of the Fifth Board of Appeals of EUIPO as of November 25, 2021, in the case with reference number R 578/2021-5 concerning an appeal filed in the proceedings for declaring lapse of a trademark of the European Union No. EUTM 1264183.

The trademark EUTM 1264183 was applied on August 2, 1999 for the following goods and services:

Class 18: leather and imitation leather and products made of these materials not included in other classes; animal skins; handbags, trunks and travel bags; umbrellas, sunshades and walking sticks; whips, harness and saddlery;

Class 25: clothing, footwear, headgear;

Class 39: transportation, packaging, distribution and storage of leather and imitation leather, products made from these materials, hides and animal skins, bags, trunks, travel bags, sunshades, walking sticks, whips, harness and saddlery products, clothing, footwear and headgear.

The subject mark was subsequently registered on August 1, 2000.

On November 4, 2019, a request was filed in the EUIPO for declaring lapse of the subject mark for all the above mentioned goods and services. The request was recognized by the Office as justified in whole.

Given the date of registration and the date of filing the request, the owner of the mark had to prove its genuine use from November 4, 2014 up to and including November 3, 2019.

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