Store-front use isn't a free pass: EU General Court narrows genuine use for single-brand stores in K-Way v EUIPO

What has happened?

• The EU General Court has clarified in K-Way SpA v EUIPO (T-372/24) that using an EU trade mark on a store front does not automatically constitute genuine use of the mark for all goods sold within that store, even in a single-brand retail environment.

• The Celine ECJ decision established that the use of a mark as a company name or store name constitutes genuine use for the goods sold by that company or store (even if the mark is not used on such goods) if the mark is used in such a way as to create a link between the mark and the goods marketed. 

• The subsequent Euroapotheca UAB case has often been interpreted to mean that the requisite link is present where a store only sells own-/single-brand products. The rationale is that the required link would be present if the store only sells its own products.

• The Court has now clarified that this interpretation is wrong. The necessary link must be established on a case-by-case basis and there is no presumption of a link in the case of single-brand stores. In particular, where the store also uses other marks it has coined on some goods, the link might be more difficult to establish.

• Ideally, brand owners should use their marks on goods themselves (eg on labelling or ticketing) if they wish to maintain registrations for goods. Where that is not possible, use as a company/shop name can constitute use on the goods sold by that company/shop if the requisite link is established.

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Precedent decisions such as the ECJ in SARL Céline v SA Céline (C-17/06) held that use of a mark as a company name or store name only constitutes use for the goods sold by that company or store if the mark is used in such a way as to create a link between the mark and the goods marketed.

Subsequently, the EU General Court in Euroapotheca UAB v EUIPO (T-686/19) (aka the GNC LIVE WELL case) held that use of a store name on a single-brand store (that is, a store that only sells its own goods) was sufficient to constitute genuine use for the goods sold by that store, even though the mark had not appeared directly on those goods. The rationale was that the required link would be present if the store only sold its own products. This latter decision gave rise to a widespread interpretation and consensus that use of store names by single-brand stores creates the necessary link with the goods sold by the store.

The recent K-Way decision, however, has effectively qualified that broader interpretation. The EU General Court noted that, in the GNC LIVE WELL case, the trade mark owner had also sufficiently substantiated its evidence in a way that demonstrated use of the mark in close association with the goods themselves, such as on product packaging and invoices. This distinction is critical, as K-Way's reliance on store signage alone, coupled with the use of multiple other marks it had created within the store, failed to establish that necessary link.

Why did K-Way fail to show genuine use?

The case concerned K-Way's position mark, a rectangular stripe consisting of parallel vertical stripes of various sizes in specific colours, registered for goods in classes 18, 25 and 26, including bags, clothing, and headgear. The mark was only used on the front of K-Way's stores. The question was whether this constituted genuine use for the goods covered by the registration sufficient to fend off a revocation action.

K-Way argued on appeal that there is no obligation to affix the mark to the goods to prove genuine use, and that use of a mark on a monobrand store front had been held sufficient to show genuine use of various goods sold within the store in the GNC LIVE WELL case.

The EU General Court confirmed that, whilst there is no obligation to affix the trade mark to the goods to prove genuine use, the decisive test is whether the use of the sign establishes a link to the goods. In other words, use of a mark on a store front in a single-brand store does not automatically constitute genuine use for the goods sold within. Notably, the use of several marks for the goods marketed within the store might prevent the consumer from perceiving the necessary link.

What does this mean for you?

• To avoid the risk of revocation for non-use, marks should be used on the goods of registration themselves, for example, on labels or packaging.
• Where this is not possible, use of the mark as part of a company name or store name alone might be sufficient to constitute genuine use for the goods sold by that company/store but only where the requisite link is present. That link must be established on a case-by-case basis and won't be presumed where a company/store only sells its own products. In particular, where a company/store uses other marks it has coined on some of the goods it sells, this could prevent the necessary link from being formed in the minds of relevant consumers.

• Keeping good records of use is imperative.