Friday, September 29 2023   \  Published by Petosevic .

European Union General Court Decides Place of Use is Relevant When Assessing Genuine Use

European Union General Court Decides Place of Use is Relevant When Assessing Genuine Use

In Standard International Management LLC v. European Union Intellectual Property Office (EUIPO), Case T-768/20, dated July 13, 2022, the General Court (GC) annulled the decision of the EUIPO Board of Appeal (BoA), which upheld the Cancellation Division’s decision to revoke a trademark registration on non-use grounds.

The GC found that the BoA erred in finding that the contested mark could not be put to genuine use in the EU, because the applicant’s hotel and ancillary services were provided in the United States, outside the territory of the EU, even though the applicant targeted consumers in the EU. In essence, the BoA confused the place of provision of services with the place of use of the mark. The GC stated that even if the applicant were to supply goods or services outside the EU, it is conceivable that the applicant would use that mark to create or preserve an outlet for those goods and services in the EU. The GC cited the EUIPO Guidelines, which say that where the goods or services covered by a contested mark are provided abroad, such as holiday accommodation or particular products, advertising alone may be sufficient to amount to genuine use. Read more

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