Important General Court ruling says that those advertising their services in the EU but not actually providing the services there can still potentially fulfil the genuine use requirements. 

What has happened?

• Where a registered EU trade mark has not been put to genuine use in the EU for the goods/services covered by the registration for any continuous period of five years, the registration can be revoked on application by a third party unless there are proper reasons for such non-use. 
• In a first decision on the point, the General Court has held that advertising a service (under an EU trade mark) to consumers based in the EU constitutes genuine use of that trade mark even where the service advertised is provided outside of the EU. 
• The decision is an important one for a number of service industries (such as the holiday and hotel industries) who might advertise their services to EU-based consumers but never actually provide the services advertised in the EU.
• The decision was issued post-Brexit and so is not binding on the UK. However, it is important for those operating in the EU.

Want to know more?

Standard International Management LLC owned an EU trade mark registration for THE STANDARD in various classes including for hotel and ancillary services. Asia Standard Management Services Ltd applied to revoke the registration on the basis that the mark in question had not been put to genuine use in the EU for a continuous period of five years. The Cancellation Division and the Board of Appeal revoked the registration as Standard International's hotels were in the US, outside of the EU.

The Board of Appeal excluded evidence referring to advertisements and offers for sale of the hotel and ancillary services targeted at consumers in the EU – it held that, since the underlying services themselves were provided outside the EU, those advertisements and offers for sale could not be relevant. 

The General Court has now over-turned that decision, holding that the Board of Appeal erred in not distinguishing between the place of provision of the services and the place of use of the mark – only the latter being relevant to the examination of genuine use of an EU trade mark. The acts of advertising and of offering for sale are relevant for the purpose of establishing genuine use in so far as they occur in the relevant territory of the EU. 

The decision is relevant to a number of service industries (such as the holiday and hotel industries) who might advertise their services to EU-based consumers but never actually provide the services advertised in the EU.