Trademark use - EU court overturns Board of Appeal decision on hotel services
Can the provision of services under a certain trademark outside the European Union constitute genuine use of that trademark within the EU? At first glance, one might think this is an easy question to answer. Outside territory is definitely not “in the EU” and therefore directly and immediately contravenes the conditions laid out in Art. 58 (1)(a) and Art. 18 EUTMR for genuine use. However, in a recent decision, the General Court (T-768/20 of 13 July 2022 – The Standard) begged to differ – and annulled a Board of Appeal decision that had come to that “easy” conclusion.
In a trademark revocation matter alleging non-use of the EU trademark registration “The Standard” for hotel and ancillary services, the trademark proprietor had filed evidence that they had used their mark for hotel and ancillary services within the USA, as well as advertisements, promotional campaigns aimed at customers located in the European Union, reservations made directly by customers and through travel agencies situated in the European Union, invoices addressed to customers resident in the European Union, a bookings portal accessible to European Union customers via the applicant’s website, figures issued by Google Analytics software concerning traffic on the applicant’s website, as well as printouts from such a website referring to various hotel services and equipment offered and used by customers, particularly in the European Union, or even articles focusing on awards and on prizes received.
The Board of Appeal had confirmed the Cancellation Division's decision, whereby the use of the trademark for hotel and related ancillary services in the USA did not constitute proof of genuine use of the trademark within the European Union, as these services were indeed rendered outside the relevant territory. Regardless of the nationality or geographical origin of the consumers, the place of use of the trademark remained the USA, and the evidence could thus not be taken into account.
Now, the GC, referring among others to the EUIPO's own Guidelines for the Examination of EUTMs, held that the promotion, offering for sale and advertising of services that are provided outside the territory of the EU can also be genuine use of the trademark in relation to those services.
In that respect, it is essential not to conflate the location of the services with the location of the use of the EUTM. Furthermore, the GC made a point in stressing that the promotion and advertising of certain services would be considered use of those certain services and not of “advertising services” as such, thereby also correcting the BoA's diverging ruling.