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Use in the territory of the European Union remains relevant for the comparable earlier trademark until the end of the transition period, set for December 31, 2020. Beyond that date, only use within the United Kingdom will be relevant.

Opposition of April 11, 2024 O/0331/24

In the context of an opposition, the Examiner of the United Kingdom Intellectual Property Office (UKIPO) reminded of the consequences of Brexit on European Union trademarks.

Indeed, the holder of a European Union trademark or an international registration designating the European Union, registered before January 1, 2021, the end of the transition period, became the holder of a comparable registered and enforceable UK trademark, covering the same sign and the same goods and services.

The European Union trademark is freely and automatically converted into an equivalent UK right within the UK Trademark Register, while retaining the filing date or priority date (if applicable) of the original trademark from which it derives.

Furthermore, it is not subject to revocation on the grounds that the European Union trademark was not put to serious use in the UK before the end of the transition period.

Thus, the use of the trademark in an EU country before December 31, 2020, will be considered as use of the equivalent right in the UK.

Pursuant to Article 70 of the Vienna Convention on the Law of Treaties, signed on May 23, 1969, and ratified by Germany and Switzerland, the termination of a treaty under this convention takes effect without retroactive annulment of the said treaty.

Opposition of August 23, 2023 ch-B-06169-2020

In the context of an opposition, the Bundesverwaltungsgericht/RKGE ruled on appeal regarding whether the denunciation of the German-Swiss Convention on the Reciprocal Protection of Patents, Designs, Models, and Trademarks of April 13, 1892, takes effect with or without retroactive annulment.

Germany and Switzerland are parties to the Vienna Convention on the Law of Treaties, which they signed and ratified. Since this is an agreement between two contracting states, the said Convention is applicable pursuant to its Article 1.

The denunciation of the 1892 German-Swiss Convention took place in accordance with Article 56 of the Vienna Convention. The German-Swiss Convention does not contain any provisions on termination, denunciation, or withdrawal.

Article 70 of the said Convention provides that when a treaty ceases to be applied:

"Unless the treaty otherwise provides or the parties otherwise agree, the termination of a treaty under its provisions or in accordance with the present Convention: a) releases the parties from any obligation to further perform the treaty; b) does not affect any right, obligation, or legal situation of the parties created through the execution of the treaty prior to its termination.

When a State denounces or withdraws from a multilateral treaty, paragraph 1 applies in the relations between that State and each of the other parties to the treaty from the date when such denunciation or withdrawal takes effect."

Thus, the denunciation of the 1892 German-Swiss Convention took effect on May 31, 2022, without retroactive annulment and was completely repealed on June 1, 2022.

In terms of proof of use, this convention provides a favorable regime, allowing the use on the territory of one party to be considered as proof of use on the territory of the other. However, to invoke it, the necessary conditions for its application must be met.

Indeed, only German and Swiss citizens, as well as citizens of third countries residing or established in Germany or Switzerland, can invoke the rights arising from the said Convention. Furthermore, it is implicitly required that the trademark whose use is invoked must be registered in both states, although these registrations do not need to be strictly identical but must coincide in their essential elements.

Opposition of October 23, 2023 es-AP-M4137119

In the context of an opposition filed on October 23, 2023, against a Spanish trademark application, the OEPM ruled on the interpretation of the Nice International Classification.

In this case, the defendant raised the issue of non-use of the opposed trademarks. According to Article 21.bis.3 of Royal Decree 687/2002: "the proof of use of the trademark shall include information on the place, duration, extent, and nature of the use of the opposed trademark in relation to the goods or services for which the opposition is based."

The nature of the use posed a difficulty as the evidence provided by the opponent justified use for "dietary supplements for the treatment of menopause symptoms," while the trademarks are registered for "pharmaceutical preparations."

To justify the discrepancy between the actual use proven and the wording of the trademarks as registered, the opponent argued, among other things, the absence of the term "dietary supplements" in the 7th and 8th editions of the Nice International Classification, which were in force at the time of filing.

The OEPM accepted this argument and considered that "dietary supplements for the treatment of menopause symptoms" could be considered as an integral part of the general category of "pharmaceutical preparations" covered by Class 5 of the Nice International Classification.

“The evolution of the terms of the Nice Classification in its successive editions is therefore one of the factors to be taken into account in the analysis of the discrepancy that may exist between the original wording and the goods or services for which the trademark is actually, subsequently, used.”

In principle, a trademark will only be protected due to its use. In the absence of actual and serious use, the owner may still avoid the cancellation of their trademark by demonstrating the existence of "proper reasons" for its non-use. However, it is necessary for the three cumulative conditions required to justify this non-use to be met.

Cancellation Action of May 6, 2022 es-jmbar-1100_2020

In a cancellation action against the Spanish designation of an international trademark, the Commercial Court of Barcelona reiterated the conditions required to justify the non-use of a trademark.

Thus, Article 39.4 of the Spanish Trademark Law (Law 17/2001, hereinafter "LM") provides that a cause justifying the non-use of a trademark must:

• Have a direct link with the trademark
• Make the use of the said trademark impossible, or at least unreasonable
• Be independent of the will of its owner

The justification for non-use can, depending on the case, cover the entire relevant period of 5 years or only part of it, in which case it may not always be considered as excluding the requirement for proof of use.

In such a context, the duration during which the reason for non-use was applicable and the time elapsed since it was no longer relevant will be decisive.

In this case, the Court rejected the non-use exception invoked by the defendant as it did not meet the requirements of the LM.

Application of the Joint Recommendation Concerning Provisions on the Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet, adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of WIPO at the Thirty-Sixth Session of the Assemblies of the Member States of WIPO, September 24 - October 3, 2001 (the WIPO Joint Recommendation), establishing the "commercial impact" criterion.

Action for Revocation es-apbar-1158_2020

In a ruling on February 12, 2021, the Barcelona Court ruled on the use of a trademark on the internet, recognizing its use in the Spanish territory, even though the actual provision of the services offered online took place in Mexico.

In this case, a legal action for revocation due to non-use was brought against the Spanish trademark Ikonik Hotels, covering services in classes 35 and 43. In a first instance judgment, the Commercial Court upheld the revocation action, considering that the actual use of the trademark in the Spanish national territory had not been demonstrated, as the hotel services offered online pertained to services performed in Mexico. An appeal was lodged before the Barcelona Court.

According to the principle of territoriality governing trademark law, serious use must be carried out in the territory where the trademark is registered, in this case, Spain.

The Barcelona Court recognized the use in the Spanish territory by applying the principle of "commercial impact" as defined in Article 3 of the WIPO Joint Recommendation, which states that the following factors may be considered: "a) factors indicating that the user of the sign is engaging in - or has undertaken serious preparations to engage in - commercial activities in that Member State involving goods or services that are identical or similar to those for which the sign is used on the Internet; (...) c) the relationship between an offer of goods or services on the Internet and that Member State, including whether: ii) prices are indicated in the official currency of that Member State; d) the relationship between the manner of use of the sign on the Internet and that Member State, including whether: iv) the text associated with the sign is in a language commonly used in that Member State; v) the use of the sign is related to an Internet space that has been effectively accessed by internet users in that Member State; e) the relationship between the use of the sign on the Internet and a right in that sign in the Member State concerned, including whether: i) the use is based on that right." Thus, the use of a trademark on the internet is not necessarily linked to the place where the services offered online are actually performed. However, we remind you that this recommendation is not legally binding due to its nature.

Can Use in Switzerland be Considered in Evaluating Serious Use of a Trademark in Germany (and Vice Versa) under the German-Swiss Convention of April 13, 1892?

CJEU, October 22, 2020, Joined Cases C-720/18 and C-721/18, Ferrari SpA v. DU

In a ruling on October 22, 2020, the Court of Justice of the European Union provided insights into the interpretation of Directive 2008/95/EC of the European Parliament and of the Council of October 22, 2008, which approximates the laws of the Member States relating to trademarks. This was in response to two requests for a preliminary ruling submitted by the Oberlandesgericht Düsseldorf. The facts are as follows:

Since 1987 and 1990, the Italian automobile manufacturer Ferrari has held the international trademark "TESTAROSSA" and the same trademark in Germany, designating a car model. Production of this model subsequently ceased, and Ferrari used the two trademarks to identify spare parts and accessories for luxury sports cars previously marketed under these trademarks.

In two disputes between Ferrari Spa and DU, the Landgericht (Regional Court) Düsseldorf ordered the cancellation of the two "TESTAROSSA" trademarks for lack of serious use in Germany and Switzerland for the products registered in class 12. The Italian car manufacturer appealed to the Oberlandesgericht (Higher Regional Court) Düsseldorf, which, after ruling on certain points, decided to stay the proceedings and refer several questions to the Court.

In this context, the Court was able to rule on the interpretation of Article 12(1) and Article 13 of Directive 2008/95/EC and to decide on the following points:

Can the use of a trademark be considered serious when the trademark registered for a broad category of products and their components is only actually used for a specific market segment or only for spare parts or accessories for those products? The use of a trademark registered for a broad category of products can be considered serious for all the products and their components within the meaning of Article 12(1) of the Directive, even if it only concerns a specific market segment (in this case, luxury sports cars) or only spare parts or accessories for those products. It is different if, for the consumer, it is an autonomous subcategory of the product category for which the trademark has been registered.

Can the holder of a trademark who sells second-hand products that have already been marketed by them in the European Economic Area prevent the serious use of their trademark? A holder is not prevented from making serious use of their trademark when selling second-hand products that have already been marketed with their consent under that trademark.

Can a holder who provides certain services related to products previously marketed under a registered trademark make serious use of that trademark? The Court continued its reasoning by clarifying that the provision of services related to products previously marketed under a registered trademark can justify serious use of that trademark if the services are provided under that trademark.

Under Article 5 of the 1892 German-Swiss Convention, can the use of a trademark in Switzerland be considered in evaluating the serious use of the trademark in Germany within the meaning of Article 12(1) of Directive 2008/95/EC? Under the 1892 Convention between Germany and Switzerland on the reciprocal protection of patents, designs, models, and trademarks, the use of a registered trademark in one of these states on the territory of the other must be considered to determine if this trademark has been subject to "serious use." According to the Court, the 1892 Convention is incompatible with European Union law, and Germany must take necessary measures to resolve this incompatibility.

Consequently, Germany denounced the 1892 Convention, and since May 31, 2022, use in Switzerland is no longer considered in evaluating the serious use of a trademark in Germany. However, opinions suggest that the repeal of this convention does not have retroactive effects, potentially considering use in Switzerland in the evaluation of serious use before the repeal of the said convention.