Can those who promote their services in the UK but don't actually provide those services in the UK fulfil the requirements to show genuine use of a UK trade mark registration for those services?
What has happened?
- The UK High Court has considered a question similar to that which arose in the Standard International EU General Court case back in 2022 – where a service (such as a hotel) is based outside of the EU but is promoted to consumers within the EU, can that promotion amount to genuine use of an EUTM?
- In the Standard International case, the General Court held that it could, provided the use satisfies the conditions of "genuine use" – notably, use that is sufficient to create or preserve a market for the relevant services in the relevant territory (see here).
- That was an important ruling because it meant that those operating hotels and other services outside of the EU could still benefit from and maintain their EUTM protection provided they promoted the mark in the EU (in such a way as the promotion amounted to genuine use).
- The UK High Court has now applied the Standard International ruling (despite it not being binding on the UK) albeit the parties agreed that the case should apply. Those who operate in the hospitality and similar sectors outside of the UK will be buoyed by this. While the decision does not necessarily endorse the Standard International approach (as the parties agreed that it should apply), it is a step in that direction.
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Ultimately, the High Court found (over-turning the earlier decision of the UKIPO) that the evidence supplied was not sufficient to show genuine use in the UK in this particular case. This is another reminder of the need to file sufficient evidence of use. Simply showing that a particular mark has a "fame" or "reputation" in the UK is not sufficient. That is not the same as showing genuine use.
Want to know more?
Background
The case concerned the use made by MomoIP of its mark 'MOMOFUKU' to promote its internationally acclaimed chain of restaurants based in New York, Australia and Canada. The mark was registered in the UK for restaurant and related services.
EU Context: Standard International
This issue of genuine use where services are provided outside of the relevant territory was considered in the EU context, by the EU General Court in Standard International v EUIPO (T-768/20).
In that case, the proprietor's mark covered hotel services which were provided in the US (and not the relevant EU territory). Nonetheless, there was substantial evidence of use of the mark in the EU, including in the form of advertisements and promotional campaigns aimed at customers located in the EU, and reservations made directly by EU customers. The court held that this was sufficient to create or preserve an outlet for those services within the EU (ie genuine use) even if the services would ultimately be delivered outside of the EU.
Whilst this decision is not binding on the UK courts (as it was decided after the Brexit transition period) it remains persuasive authority and both parties to the appeal agreed that the approach taken was correct. On that basis, both the UKIPO and High Court referred to this reasoning in making their own assessments of genuine use.
UK Decision: MOMOFUKU
Based on the parties agreement, the High Court proceeded on the basis that activities in the UK for the purpose of promoting a restaurant abroad, could be genuine use of the mark in the UK.
In this case, however, it held that the nature and level of use evidenced in the UK was not sufficient to amount to genuine use ie it was not the level justified in the restaurant sector to create or preserve an outlet for the services which would ultimately be provided abroad.
In particular, the High Court was critical of the key evidence relied upon:
- Cookbook: A MOMOFUKU cookbook had been released and sold on Amazon UK. The rightsholder did not provide any evidence on how many copies were sold in the UK. The Hight Court considered this fatal – as evidence on the extent of circulation in the UK was important to rely on this as "use".
- Nike campaign: MOMOFUKU partnered with Nike to create a special edition trainer called 'Nike SB Dunk High MOMOFUKU' – although it did not include the word MOMOFUKU on the trainer. The High Court found there was no evidence of any promotional activity (save a few listings on the footwear retail website which did not reference the MOMOFUKU restaurants) and no evidence of any sales.
- Pop-up restaurant: One pop-up restaurant had been run in the relevant period. There was no evidence of MOMOFUKU branding at this event, and in any event the event was of a very limited scale (running for two days and serving 96 people).
- UK consumer base: Evidence was submitted that the UK is the fourth largest customer base for the MOMOFUKU restaurants. The High Court was not persuaded that this was due to UK-based promotional activities (given the very limited evidence outlined above) and instead noted that this could be caused by the high volume of UK nationals who visit New York. The same criticism was applied to MOMOFUKU's UK Instagram following, namely that this could well be caused by promotional activities outside of the UK.
The case is a useful reminder of the difficulties of showing use where services are provided outside of the UK and, in particular, the need to show sufficiently detailed evidence to explain the link between the claimed promotional activities and the relevant services.
Simply relying on the generalised "fame" or recognition of the mark within the UK will not be sufficient to show that such recognition has been caused by specific activities (ie "genuine use") within the UK. Genuine use is not the same as fame/reputation.
What does this mean for you?
- Those who operate services outside of the UK/EU but promote those services to UK-/EU-based consumers should consider the merits of UK/EU trade mark protection (if not already obtained).
- Those with UK/EU trade marks for a particular mark that is promoted in the UK/EU but not actually used here should ensure that such promotional activities are sufficient and well-documented should it ever be necessary to evidence genuine use.
- It should be remembered that, even where a mark is famous or has a reputation in the UK/EU, there is still a requirement to provide sufficient evidence to show genuine use of it in the UK/EU, if requested. Fame does not equate to use (although might help evidence it, in an appropriate case).
