If challenged, would you be able to evidence the required level of ‘genuine’ use/ acquired distinctiveness of your trade mark to defend or enforce a Community Trade Mark (CTM) registration? There have been a handful of recent decisions that have been centred upon this thorny issue.
We are referring to the decisions in Sofa Workshop v Sofa Works [2015] EWHC1773 (IPEC) (29 June 2015), Ukulele Orchestra of Great Britain v Erwin Clausen and another [2015] EWHC 1772 (2 July 2015), and ‘Jump v ‘Jumpman’ ( Nike v Intermar) ( Appointed Person Decision O-451-14). The facts of each case are worthy of lengthy consideration, but as they have already been widely reviewed, we are taking this opportunity to draw together the key ‘learnings’, and to assess how they impact upon the optimal filing strategy to be followed.
In brief, the developing precedent is that even if substantial use can be evidenced for a trade mark that is protected by a CTM registration; if this is confined to use within the owner’s own national state, it may be insufficient to constitute ‘genuine’ use of the relevant CTM. Although, this will clearly depend upon the actual circumstances of the case. The recent decisions are at odds with the decision in the Onel case which had determined that there were effectively no trade borders within Europe, and so use anywhere within the European Union would validate a CTM registration.
As a consequence of the recent decisions, businesses may be better protected and have more ‘valid’ and enforceable rights, if they secure protection in their home territory (member state) i.e. opt for a national UK filing, rather than a CTM filing at the outset. From that point, their business may expand, and so the possibility of filing further national applications in other European countries and/or a CTM application will need to be kept under review.
For businesses that have established outside Europe i.e. the US, they may need may need to think more carefully about whether to seek trade mark protection on a country-by-country basis across the European Union in addition to, or as an alternative to securing a CTM registration. Balancing the higher costs with more robust and secure trade mark protection.
If any conclusion can be drawn from these recent decisions, and until clarity is achieved, the key factor to keep in mind is to ‘think before your leap’ when determining the appropriate jurisdiction/s for any new trade mark filing in Europe. It is also important to re-visit the level of protection that has been secured as any business expands to new territories, or diversifies. Regular portfolio reviews are recommended.
The trade mark team at Albright IP are well-placed to offer advice and assistance in achieving the most robust protection for your trade marks, in the most cost-effective way.
