A new Standard for use evidence?

United Kingdom

The General Court decision in Case No. T-768/20 (Standard International Management LLC v EUIPO) addresses the important issue of the use of hotel and leisure brands in the EU, where the corresponding hotel or leisure facility is based outside of the jurisdiction.

In this case, Standard International Management LLC owned an EU trade mark registration for the mark shown below:

A new Standard image article 27-09

Asia Standard Management Services Ltd applied to revoke the mark on the basis that the mark had not been put to genuine use in the EU. Indeed, the hotels to which the brand was applied were based in the United States.

The Cancellation Division and the Board of Appeal therefore concluded that the mark had not been put to genuine use in the EU because the hotel services in question were rendered outside of the EU. The nationality or geographical origin of the customers was irrelevant.

However, on further appeal, the General Court was more willing to take into consideration evidence of advertisements and promotional campaigns aimed at consumers located in the EU. The Court observed that it would be wrong to conclude that a mark could not immediately be put to genuine use in the EU simply because the applicant’s hotel services were provided in the US. A distinction should be drawn between the place where those services are provided and the place of use of the mark. Only the latter is relevant to the assessment of genuine use in the EU.

In any infringement action, a trade mark proprietor can prohibit a third party from using a sign to offer goods or services for sale or in advertising. Given that such acts constitute use for infringement purposes, they should also constitute use for the purposes of establishing genuine use.

This conclusion is supported by the EUIPO’s examination guidelines which provide that “where the goods or services are available abroad, such as holiday accommodation or particular products, advertising alone may be sufficient to amount to genuine use”.

The decision offers some significant comfort for the owners/operators of non-EU hotels but with a significant customer base in the EU. It clearly demonstrates that, with targeted advertising and promotion, it is possible to maintain an EU trade mark registration, and hence potentially prevent the establishment of similarly named hotels in the EU, even where no hotel services themselves are rendered in the EU by the applicant.