Trademark revocation, genuine use and Case T-1088/23
As an IP lawyer, I've often heard that the strongest and potentially endless IP right is a trademark right, because it can be renewed indefinitely, you just need to pay a renewal fee every ten years (or another applicable term).
That's true, but not entirely.
To maintain trademark protection for a brand, the right holder must actually use the registered trademark as an indication of origin, not as a token, and in some cases must be able to prove such use in connection with the goods and services listed in the specification. Under EU law, any person may file a revocation application after five years of registration if the trademark has not been genuinely used.
A reasonable question arises: can such a revocation application be considered inadmissible or even abusive, particularly if it seems to be an act of unfair competition by a competitor?
In its judgment in Case T-1088/23, dated 7 May 2025, the General Court emphasized that the right to file a revocation application does not depend on the good faith of the applicant. It is an absolute procedural right of any third party. A trademark owner who has not used their mark for a continuous period of five years cannot maintain their monopoly merely because they were the first to register it.
Secondly, if the right holder cannot provide evidence of genuine use for certain goods or services listed in the specification, those goods or services will be revoked.
Thirdly, and perhaps most interestingly, the Court clarified that even if a trademark enjoys a reputation for some goods or services, the owner must still prove genuine use for the remaining goods and services in the specification. The threshold of proof remains unchanged, even for marks with a reputation.
So, it's important to register your trademark for the goods and services you actually plan to render/offer on the market within the next five years, and to systematically collect evidence of use for each class and item covered by the TM registration. Honestly, many IP offices include a reminder about this upon trademark registration.
The link to the decision is provided below:
https://lnkd.in/dW489mZc
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That's true, but not entirely.
To maintain trademark protection for a brand, the right holder must actually use the registered trademark as an indication of origin, not as a token, and in some cases must be able to prove such use in connection with the goods and services listed in the specification. Under EU law, any person may file a revocation application after five years of registration if the trademark has not been genuinely used.
A reasonable question arises: can such a revocation application be considered inadmissible or even abusive, particularly if it seems to be an act of unfair competition by a competitor?
In its judgment in Case T-1088/23, dated 7 May 2025, the General Court emphasized that the right to file a revocation application does not depend on the good faith of the applicant. It is an absolute procedural right of any third party. A trademark owner who has not used their mark for a continuous period of five years cannot maintain their monopoly merely because they were the first to register it.
Secondly, if the right holder cannot provide evidence of genuine use for certain goods or services listed in the specification, those goods or services will be revoked.
Thirdly, and perhaps most interestingly, the Court clarified that even if a trademark enjoys a reputation for some goods or services, the owner must still prove genuine use for the remaining goods and services in the specification. The threshold of proof remains unchanged, even for marks with a reputation.
So, it's important to register your trademark for the goods and services you actually plan to render/offer on the market within the next five years, and to systematically collect evidence of use for each class and item covered by the TM registration. Honestly, many IP offices include a reminder about this upon trademark registration.
The link to the decision is provided below:
https://lnkd.in/dW489mZc