Trade mark guidelines, Part C Opposition, Section 7 Proof of use

Part C Opposition Section 7 Proof of use

1 Introduction

1.1 Function of proof of use

European Union legislation on trade marks establishes an obligation for the owner of a registered trade mark to use that mark in a genuine manner. The owner must put the mark to genuine use within a period of 5 years following its registration (Article 18(1) EUTMR). Meanwhile, the owner has a ‘grace period’ of 5 years following its registration, during which it cannot be required to demonstrate use of the mark in order to rely upon it — including in opposition proceedings before the Office. Once this grace period has lapsed, the owner may be required to prove genuine use of the earlier mark for a period of time that may overlap with the 5 years following its registration (see, to this effect, 23/11/2022, T‑515/21, Euphytos / EuPhidra (fig.), EU:T:2022:722, § 67-69). The reason behind the requirement that earlier marks must be put to genuine use is to restrict the number of trade marks registered and protected and, consequently, the number of conflicts between them (12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68, § 38). When it comes to the requirement to prove use in opposition proceedings before the Office, it is important to bear in mind that the purpose of Article 47(2) and (3) EUTMR is not to assess commercial success or to review the economic strategy of an undertaking, nor is it to restrict trade-mark protection to only large-scale commercial use of the marks (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 32; 08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 38). The Office does not inquire ex officio whether the earlier mark has been used. Such examination takes place only when the EUTM applicant makes an explicit request for proof of use. Such a request, if the legal requirements are met, triggers the procedural and substantive consequences laid down in the EUTMR, EUTMDR and EUTMIR.

1.2 Legislative framework

The legislative framework consists of provisions of the EUTMR, the EUTMDR, the EUTMIR and Directive (EU) 2015/2436 approximating the laws of the Member States relating to trade marks ( )(the Directive), as implemented in the national law of the Member States. Article 18 EUTMR Article 18 EUTMR stipulates the basic substantive requirement for the obligation to use registered marks:

If, within a period of five years following registration, the proprietor has not put the EU trade mark to genuine use in the Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use. Article 18(1)(a) EUTMR states that use of the EU trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered constitutes use. This applies regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. Article 18(1) (b) EUTMR states that affixing the EU trade mark to goods or to the packaging of goods in the Union also constitutes use, even when solely for export purposes. According to Article 18(2) EUTMR, use of the EUTM with the consent of the proprietor will be deemed to constitute use by the proprietor. Article 47(2) and (3) EUTMR The consequences of a lack of use in opposition proceedings are dealt with in Article 47(2) and (3) EUTMR: If the applicant so requests, the proprietor of an earlier EU trade mark who has given notice of opposition shall furnish proof that, during the five-year period preceding the date of filing or the date of priority of the EU trade mark application, the earlier EU trade mark has been put to genuine use in the Union in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier EU trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier EU trade mark has been used in relation to only part of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services. Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Union. It follows from the wording of Article 47(2) and (3) EUTMR that proof of use can only be requested if the earlier right is an EUTM or other trade mark having effect in the EU or an EU Member State, as defined in Article 8(2)(a) EUTMR. Since oppositions brought under Article 8(4) EUTMR cannot be based on either EUTMs or other trade marks referred to in Article 8(2)(a) EUTMR, the EUTM applicant is not entitled to request proof of use for earlier rights relied upon in oppositions brought under this provision. Nevertheless, Article 8(4) EUTMR requires the opponent to prove use in the course of trade of more than mere local significance for the earlier rights in question. As for Article 8(3) EUTMR, no request for proof of use can be made under Article 47(2) or (3) for any of the earlier marks relied on. The reason is that the earlier marks eligible under Article 8(3) EUTMR include both trade marks having effect in the EU and outside the EU, requests for proof of use of the latter not being possible under the EUTMR. It would be discriminatory to request proof of use for some countries’ trade

marks but not for others. In any event, it follows from the specific requirement under Article 8(3) EUTMR to establish a principal / agent relationship, that, in principle, the earlier mark has normally been put to use by the applicant, under authorisation, and so on behalf, of the proprietor of the earlier mark. Article 10 EUTMDR and Article 24 EUTMIR Pursuant to Article 10(1) EUTMDR, a request for proof of use of an earlier mark must be unconditional, explicit and unambiguous and submitted in a separate document within the period specified by the Office pursuant to Article 8(2) EUTMDR, see Part C, Section 1 Opposition proceedings, point 5.1. In accordance with Article 10(2) EUTMDR, where, pursuant to Article 47(2) or (3) EUTMR, the opponent has to submit proof of use or show that there are proper reasons for non-use, the Office will invite the opponent to provide the proof required within a period specified by the Office. If the opponent does not provide such proof before the time limit expires, the Office will reject the opposition. In accordance with Article 10(3) EUTMDR, the indications and evidence required to prove use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based, and evidence in support of these indications in accordance with paragraph 4. In accordance with Article 10(4) EUTMDR, the evidence must consist of written documents and in principle be confined to supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 97(1)(f) EUTMR. In accordance with Article 10(5) EUTMDR, a request for proof of use may be submitted at the same time as observations on the grounds on which the opposition is based. Such observations may also be filed together with the observations in reply to the proof of use. As regards language, the general rules relating to supporting documents to be used in written proceedings before the Office apply, as provided for in Article 24 EUTMIR. As such, the evidence of use may be submitted in any official language of the European Union. Nevertheless, in accordance with Article 10(6) EUTMDR, where the evidence submitted is not in the language of the opposition proceedings, the Office may require the opponent to submit a translation of the evidence in that language, within a period specified by the Office. The Directive Articles 16(1), (5) and (6) of the Directive contain provisions relating to trade marks having effect in a Member State substantially identical to Article 18 EUTMR. Articles 16(2), (3) and (4) of the Directive are relevant for the purposes of determining the grace period for non-use of trade marks having effect in a Member State. This section of the Guidelines deals with the substantive aspects of proving genuine use. The procedural aspects of proof of use are dealt with in the Guidelines, Part C, Opposition, Section 1, Opposition Proceedings, paragraph 5.

2 General principles and standard of proof

2.1 General principles

The EUTMR, the EUTMDR and the EUTMIR do not define what is to be regarded as ‘genuine use’. However, the Court of Justice (the ‘Court’) has laid down several important principles as regards the interpretation of this term. In Minimax (11/03/2003, C-40/01, Minimax, EU:C:2003:145), the Court established the following principles: genuine use means actual use of the mark (paragraph 35);

genuine use must, therefore, be understood to denote use that is not merely token,

serving solely to preserve the rights conferred by the mark (paragraph 36); genuine use must be consistent with the essential function of a trade mark, which

is to guarantee the identity of the origin of goods or services to the consumer or end user by enabling the latter, without any possibility of confusion, to distinguish the product or service from others that have another origin (paragraph 36); ( ) genuine use entails use of the mark on the market for the goods or services

protected by that mark and not just internal use by the undertaking concerned (paragraph 37); genuine use must relate to goods or services already marketed or about to be

marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (paragraph 37); when assessing whether there has been genuine use, regard must be had to

all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, in particular whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark (paragraph 38); the circumstances of the case may, therefore, include giving consideration, inter alia,

to the nature of the goods or services at issue, the characteristics of the market concerned and the scale and frequency of use of the mark (paragraph 39); use need not, therefore, always be quantitatively significant for it to be deemed

genuine, as that depends on the characteristics of the goods or services concerned on the corresponding market (paragraph 39). In its order of 27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, the Court further elaborated the Minimax criteria as follows: the question whether use is sufficient to preserve or create market share for the

goods or services concerned depends on several factors and on a case-by-case assessment. The characteristics of the goods and services, the frequency or

regularity of the use of the mark, whether the mark is used for the purpose of marketing all the identical goods or services of the proprietor or merely some of them, or evidence that the proprietor is able to provide, are among the factors that may be taken into account (paragraph 22); use of the mark by a single client that imports the goods for which the mark is

registered can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor of the mark (paragraph 24); a de minimis rule cannot be laid down (paragraph 25).

2.2 Standard of proof

Article 47 EUTMR requires proof of genuine use of the earlier mark. Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22). Moreover, the Office cannot determine ex officio the genuine use of earlier marks. Even proprietors of purportedly well-known marks must submit evidence to prove genuine use of the earlier mark(s). The Office does not necessarily require a high threshold of proof of genuine use. The Court has indicated that it is not possible to prescribe, in the abstract, what quantitative threshold should be chosen in order to determine whether use was genuine or not, and accordingly there can be no objective de minimis rule to establish a priori the level of use needed in order for it to be ‘genuine’. So, whilst a minimum extent of use must be shown, what exactly constitutes this minimum extent depends on the circumstances of each case. The general rule is that, when it serves a real commercial purpose, even minimal use of the trade mark could be sufficient to establish genuine use, depending on the goods and services, and the relevant market (23/09/2009, T-409/07, acopat, EU:T:2009:354, § 35 and case-law cited therein; 02/02/2012, T-387/10, Arantax, EU:T:2012:51, § 42). In other words, it is sufficient if the evidence of use proves that the trade mark owner has seriously tried to acquire or maintain a commercial position in the relevant market. However, not just any proven commercial exploitation can automatically be qualified as genuine use of the mark in question (17/07/2014, C‑141/13 P, Walzer Traum, EU:C:2014:2089, § 32). Use may still be insufficient even where commercial exploitation has been proven to a certain extent. According to Article 10(3) EUTMDR, the indications and evidence required in order to provide proof of use must concern the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods and services. These requirements for proof of use are cumulative (05/10/2010, T-92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate but also to prove each of these requirements. However, the sufficiency of the indication and proof as to the place, time, extent and nature of use

has to be considered in view of the entirety of the evidence submitted. A separate assessment of the various relevant factors, each considered in isolation, is not suitable (17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 31). Thus, the Office evaluates the evidence submitted in an overall assessment. All the circumstances of the specific case have to be taken into account and all the materials submitted must be assessed in conjunction with each other. Therefore, although pieces of evidence may be insufficient by themselves to prove the use of an earlier trade mark, they may contribute to proving use in combination with other documentation and information. Evidence of use may be of an indirect/circumstantial nature, such as evidence about the share in the relevant market, the importing of the relevant goods, the supply of the necessary raw materials or packaging to the owner of the mark, or the expiry date of the relevant goods. Such indirect evidence can play a decisive role in the overall assessment of the evidence submitted. Its probative value has to be carefully assessed. For instance, the judgment of 08/07/2010, T-30/09, Peerstorm, EU:T:2010:298, § 42 et seq. found that catalogues in themselves could — under certain circumstances — be conclusive evidence of sufficient extent of use. It is necessary to take into account the specific kind of the goods and services involved when assessing the probative value of the evidence submitted. For example, it may be common in a particular market sector for the samples of the goods and services themselves not to bear indications of the place, time, extent and nature of use. In these cases it is obviously inappropriate to disregard such evidence of use if indications in this respect can be found in the other evidence submitted. Each of the documents submitted has to be carefully evaluated as to whether it really reflects use in the 5 years preceding the date of filing or the date of priority of the EUTM application (see paragraph 4 below) and use in the relevant territory (see paragraph 3 below). ( ) In particular, the dates and place of use shown on orders, invoices and catalogues are carefully examined. Material submitted without any indication of date of use may, in the context of an overall assessment, still be relevant and taken into consideration in conjunction with other pieces of evidence that are dated (17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 33). This is the case in particular if it is common in a particular market sector for the samples of the goods and services themselves not to bear indications of time (05/09/2001, R 608/2000-4, PALAZZO / HELADERIA PALAZZO, § 16, noting that icecream menus are rarely dated). For implementation of the abovementioned general principles in practice, see the examples in paragraph 10.5 below.

3 Place of use

3.1 Use in the territory where the trade mark is protected

Trade marks must be used in the territory where they are protected (EU for EUTMs, the territory of the Member State for national marks or Benelux for Benelux marks, and the territories of the relevant countries for international registrations). As the Court held ‘the territorial scope of the use is only one of several factors to be taken into account in the determination of whether that use is genuine or not’ (19/12/2012, C‑149/11, Onel / Omel, EU:C:2012:816, § 30), the Court further indicated that use of the mark in non-EU territories cannot be taken into account (para. 38). In view of the globalisation of trade, an indication of the registered seat of the mark’s owner may not be regarded as sufficient proof that the use has taken place in that particular country. Even though Article 18(1)(b) EUTMR stipulates that affixing the trade mark to goods or their packaging in the EU solely for export purposes is considered use of the mark, merely indicating the opponent’s seat does not constitute evidence of such acts. On the other hand, the fact that clients have their seats outside the relevant territory listed in the documents for proving use of the earlier mark is in itself not sufficient to rule out that services (e.g. promotion services) may actually have been rendered in the relevant territory to benefit these companies, even if they are located in other territories (09/06/2010, R 952/2009‑1, GLOBAL (fig.) / GLOBAL TABACOS (fig.), § 16). In addition, a distinction must be made between the place of supply of the relevant goods and/or the place of provision of the relevant services and the place of use of the mark. Genuine use may be demonstrated by multiple types of acts, and cannot be limited solely to the provision of the goods and services. Advertising and offering for sale may also be relevant for the purposes of establishing genuine use of the mark if they occur in the relevant territory (including the situation where they are directed at the relevant public of that territory), even if the goods or services were provided outside that territory (see 13/07/2022, T‑768/20, The standard (fig.), EU:T:2022:458, § 34-35, 45). For further information, see the Guidelines,Part C, Section 7, Proof of use, Chapter 6, Nature of use, paragraph 6.1.2.5 Use in advertising.

3.2 EUTMs: use in the European Union

If the earlier mark is a European Union mark, it must be used ‘in the Union’ (Articles 18(1) and 47(2) EUTMR). Following Leno Merken, Article 18(1) EUTMR must be interpreted as meaning that the territorial borders of the Member States should be disregarded when assessing whether an EUTM has been put to ‘genuine use’ in the European Union (§ 44).

In territorial terms and in view of the unitary character of the EUTM, the appropriate approach is not that of political boundaries but of market(s). Moreover, one of the aims pursued by the EUTM system is to be open to businesses of all kinds and sizes. Therefore, the size of an undertaking is not a relevant factor for establishing genuine use. As the Court indicated in Leno Merken, it is impossible to determine a priori and in the abstract what territorial scope should be applied in order to determine whether use of the mark is genuine or not (§ 55). Territorial scope is only one of several factors to be taken into account when assessing whether use of an EUTM is genuine. Furthermore, a de minimis rule for establishing whether that factor is satisfied cannot be laid down (07/11/2019, T‑380/18, INTAS / INDAS (fig.) et al., EU:T:2019:782, § 80). An EUTM need not be used in an extensive geographic area for use to be deemed genuine, since this will depend on the characteristics of the goods or services concerned on the corresponding market and, more generally, on all the facts and circumstances relevant to establishing whether commercial exploitation of the mark serves to create or maintain market shares for the goods or services for which it was registered (19/12/2012, C‑149/11, Onel / Omel, EU:C:2012:816, § 55; 07/11/2019, T‑380/18, INTAS / INDAS (fig) et al., EU:T:2019:782 § 80). All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity (19/12/2012, C‑149/11, Onel / Omel, EU:C:2012:816, § 58). Moreover, for use of an EUTM to be deemed genuine, the mark need not be used in a substantial part of the European Union. The possibility that it may have been used in the territory of only a single Member State must not be ruled out, since the borders of the Member States must be disregarded while the characteristics of the goods or services concerned must be taken into account (07/11/2019, T‑380/18, INTAS / INDAS (fig) et al., EU:T:2019:782, § 80). The General Court has held on numerous occasions that use of an EUTM in a single Member State (for example, in Germany, in Spain, or in the United Kingdom), or even in a single city in a Member State of the European Union, is sufficient to satisfy the criterion of territorial scope (07/11/2019, T‑380/18, INTAS / INDAS (fig) et al., EU:T:2019:782, § 81 and the case-law cited). For example, use of an EUTM in the United Kingdom (15/07/2015, T‑398/13, TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 57) or even in London and its immediate surroundings may be geographically sufficient (30/01/2015, T‑278/13, now, EU:T:2015:57). The Board of Appeal decision of 07/03/2013, R 234/2012-2, now (fig.) (confirmed 30/01/2015, T-278/13, now, EU:T:2015:57), considered the use of an EUTM for wireless broadband services in Class 42 in the geographical area comprising London and the Thames Valley sufficient to constitute genuine use in the United Kingdom and also in the European Union, taking into account the territorial extent [London being ‘the largest city in the United Kingdom and the largest urban zone in the European Union’, having ‘a metropolitan area ... with an estimated total

population of between 12 million and 14 million people’, being ‘the world’s leading financial centre along with New York’, ‘a leading centre of arts, science, tourism and media and information technology’, and having a profile on the European commercial scene ‘disproportionately high in respect to the services in question’ (R 234/2012-2, § 47), and the Thames Valley being ‘200 miles long and 30 miles wide’ and including ‘populous towns and cities of significant economic activity’ (R 234/2012-2, § 45-46)], the scale, frequency and regularity of use and the characteristics of the market concerned (R 234/2012-2, § 52). In other words, whether an EUTM has been used in one Member State or several is irrelevant. What matters is the impact of use in the internal market and, more specifically, whether it is sufficient to maintain or create market share in that market for the goods and services covered by the mark and whether it contributes to a commercially relevant presence of the goods and services in that market. Whether that use results in actual commercial success is not relevant (07/11/2019, T‑380/18, INTAS / INDAS (fig) et al., EU:T:2019:782, § 82). The Office must determine on a case-by-case basis whether the various indications and evidence can be combined for the purpose of assessing the genuine character of use, the geographical dimension of which is only one of the aspects to be considered. In any event, it must be underlined that the European requirements or standards for genuine use are applicable (i.e. the conditions of Article 18 EUTMR) and not national standards or practices applied to EUTMs.

3.3 National marks: use in the relevant Member State

If the earlier mark is a national mark with effect in one of the Member States of the European Union, the mark must have been genuinely used in the country where it is protected (Article 47(3) EUTMR). Use in a part of the Member State, provided it is genuine, may be considered sufficient:

If the earlier mark is an international mark or a Benelux mark, the mark must have been genuinely used in the territory of the relevant countries of the international registration or in Benelux, respectively.

3.4 Use in the import and export trade

According to Article 18(1)(b) EUTMR, the affixing of the European Union trade mark to goods or to the packaging thereof in the European Union solely for export purposes also constitutes use within the meaning of Article 18(1) EUTMR. The mark has to be used (i.e. affixed to goods or their packaging) in the relevant market — that is, the geographical area where it is registered.

Evidence relating only to the import of the goods in the relevant area may, depending on the circumstances of the case, suffice as proof of use in this area (see by analogy 09/07/2010, T-430/08, Grain Millers, EU:T:2010:304, § 33, 40 et seq. regarding proof of use in the course of trade of a sign, on the basis of imports from Romania to Germany). The Court has held that transit, which consists in transporting goods lawfully manufactured in a Member State to a non-member country by passing through one or more Member States, does not involve any marketing of the goods in question and is therefore not liable to infringe the specific subject matter of the trade mark (regarding the transit through France of goods originating in Spain and destined for Poland, see judgments of 23/10/2003, C-115/02, Rioglass and Transremar, EU:C:2003:587, § 27; 09/11/2006, C-281/05, Diesel, EU:C:2006:709, § 19). Therefore, mere transit through a Member State cannot constitute genuine use of the earlier mark in that territory (09/12/2015, T-354/14, ZuMEX (fig.) / JUMEX, EU:T:2015:947, § 62).

4 Time of use

In opposition proceedings, the applicable substantive law is the law which was in force at the time of filing of the contested EUTM application. The provisions defining the relevant period for which the genuine use of the earlier mark (Article 47(2) and (3) EUTMR) must be proven must be considered as substantive rules. Therefore, when establishing the relevant period, reference must be made to the substantive provisions in force at the time of filing of the contested EUTM application (24/01/2024, T‑55/23, SALVAJE (fig.) / SALVANA, EU:T:2024:30, § 18, 43-44).

4.1 Calculation of the relevant period

4.1.1 Contested EUTM applications and International registrations designating the EU filed on or after 23/03/2016

If the earlier mark is subject to the use requirement at all (registered for not less than 5 years), the actual period for which use must be shown can simply be computed backwards from the filing or, if the contested EUTM application has a priority date, from the priority date of the contested EUTM application. For example, if the contested EUTM application was filed on 15/06/2016, or if this date was the priority date of the contested EUTM application, the opponent would have to prove genuine use of its mark within the period from 15/06/2011 to 14/06/2016. If the contested mark is an international registration designating the European Union, the actual period for which use must be proven can simply be computed backwards from the date of registration (INID code 151) or the date of priority (INID code 300), or, as the case may be, the date of subsequent designation of the European Union (INID code 891). For example, if the contested international registration were registered, or if the European Union were subsequently designated, on 15/06/2016, the opponent would have to prove genuine use of its mark within the period from 15/06/2011 to 14/06/2016. Where a mark has not been genuinely used for more than 5 years before the filing or priority date of the contested EUTM application, the fact that there may be remaining goodwill or knowledge of the mark in the mind of the trade or customers does not ‘save’ the mark. The use need not have been made throughout the period of 5 years, but rather within the 5 years. The provisions on the use requirement do not require continuous use (16/12/2008, T-86/07, Deitech, EU:T:2008:577, § 52).

4.1.2 Contested EUTM applications and International registrations designating the EU filed before 23/03/2016

For contested EUTM applications and International registrations designating the EU filed before 23/03/2016, the regime for calculating the relevant period prior to the entry into force of Amending Regulation (EU) 2015/2424 applies, according to which the 5-year period has to be computed backwards from the date of publication of the contested EUTM application. In the case of contested IRs designating the EU, the equivalent date is the date of first publication of the IR or its subsequent designation in the EUTM Bulletin (25/04/2018, T-312/16, CHATKA / CHATKA (fig.), EU:T:2018:221, § 19-42).

4.2 Considerations of circumstances outside the relevant period

Evidence referring to use made outside the relevant time frame is in general immaterial, unless it constitutes conclusive indirect proof that the mark must have also been put to genuine use during the relevant period. The Court held in this context that circumstances subsequent to the relevant point of time may make it possible to confirm or better assess the extent to which the trade mark was used during the relevant period and the real intentions of the proprietor during that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 31; 03/10/2019, T‑666/18, ad pepper (fig.), EU:T:2019:720, § 65-69).

5 Extent of use

5.1 Criteria

In this regard, it has to be evaluated whether, in view of the market situation in the particular industry or trade concerned, it can be deduced from the material submitted that the owner has seriously tried to acquire a commercial position in the relevant market. The trade mark has to be used for goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37). This does not mean that the opponent has to reveal the total volume of sales or turnover figures. Concerning the extent of use made of the earlier mark, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred, as well as the frequency of those acts, on the other (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35). The assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42). Under certain circumstances, even circumstantial evidence such as catalogues featuring the trade mark, despite not providing direct information on the quantity of goods actually sold, can be sufficient by themselves to prove the extent of use in an overall assessment (15/07/2015, T-398/13 TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 57-58; 08/07/2010, T-30/09, Peerstorm, EU:T:2010:298, § 42 et seq.). Use does not have to be made during a minimum period of time to qualify as ‘genuine’. In particular, use does not have to be continuous throughout the relevant period of

5 years. It is sufficient if use was made at the very beginning or end of the period, provided the use was genuine (16/12/2008, T-86/07, Deitech, EU:T:2008:577). The exact decisive threshold proving genuine use cannot be defined out of context. The turnover and volume of sales of the product must always be assessed in relation to all the other relevant factors, such as the volume of business, production or marketing capacity, or the degree of diversification of the undertaking using the trade mark, and the characteristics of the products or services on the relevant market. Use need not always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or services concerned on the corresponding market (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 39; 08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42). Low turnover and sales, in absolute terms, of a medium- or low-priced product might support the conclusion that use of the trade mark in question is not genuine. However, with regard to expensive goods or an exclusive market, low turnover figures or a low volume of sales can be sufficient (22/10/2020, C-720/18 & C-721/18,Testarossa, ECLI:EU:C:2020:854, § 51-52). It is, therefore, always necessary to take the characteristics of the market in question into account (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 51). A de minimis rule cannot be laid down. Use of the mark by a single client, which imports the products for which the mark is registered, can be sufficient to demonstrate that such use is genuine if it appears that the import operation has a genuine commercial justification for the proprietor of the mark (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 24 et seq.). Genuine use is not excluded only because all use involves the same customer, as long as the trade mark is used publicly and outwardly and not solely within the undertaking that owns the earlier trade mark or within a distribution network owned or controlled by that undertaking (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 50; 08/10/2014, T-300/12, Fairglobe, EU:T:2014:864, § 36). Moreover, evidence of genuine use such as invoices cannot be excluded on the sole ground that they are addressed to intermediaries and not final consumers (04/12/2024, T‑538/23, CELEBRITI (fig.), EU:T:2024:877, § 39-40). The smaller the commercial volume of the exploitation of the mark, the more necessary it is for the opposing party to produce additional evidence to dispel any doubts as to its genuineness (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 37). Concerning the ratio between the turnover generated by the sales of products under the earlier mark and the applicant’s annual turnover, it should be noted that the degree of diversification of the activities of undertakings operating in one and the same market varies. Moreover, the obligation to produce evidence of genuine use of an earlier trade mark is not designed to monitor the commercial strategy of an undertaking. It may be economically and objectively justified for an undertaking to market a product or a range of products even if their share in the annual turnover of the undertaking in question is minimal (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 49).

Special circumstances, for example, lower sales figures during the initial marketing phase of a product, could be of relevance when assessing the genuineness of use (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 53). The initial phase of marketing a product may last more than a few months but it cannot be prolonged indefinitely (18/03/2015, T-250/13, SMART WATER, EU:T:2015:160, § 54-55; confirmed 17/03/2016, C-252/15 P, SMART WATER, EU:C:2016:178).

5.2 Examples of insufficient use 5.3 Examples of sufficient use

6 Nature of use

The term ‘nature of use’ refers to: use of the mark in accordance with its essential function, in the course of trade

(paragraph 6.1 below); use of the mark as registered or of a variation thereof (paragraph 6.2 below); and

use of the mark in connection with the goods and services for which it is registered

(paragraph 6.3 below).

6.1 Use as a trade mark

6.1.1 Use of a mark in accordance with its function

6.1.1.1 Use of individual marks

Article 18 and Article 47(2) EUTMR require proof of genuine use in connection with the goods or services for which the trade mark is registered and which the opponent cites as justification for its opposition. Hence, the opponent has to show that the mark has been used as a trade mark on the market. As a trade mark has, inter alia, the function of operating as a link between the goods and services and the person responsible for their marketing, the proof of use must establish a clear link between the use of the mark and the relevant goods and services. As clearly indicated in Article 10(4) EUTMDR, it is not necessary for the mark to be affixed to the goods themselves (12/12/2014, T-105/13 TrinkFix, EU:T:2014:1070, § 28-38). A representation of the mark on packaging, catalogues, advertising material or invoices relating to the goods and services in question constitutes direct evidence that the mark has been put to genuine use. Genuine use requires that use is made as a trade mark: not for purely illustrative purposes or on purely promotional goods or services,

in accordance with its essential function, which is to guarantee the identity of the

origin of the goods or services for which it is registered (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 43). Therefore, by way of example, the following are not suitable for supporting genuine use of a trade mark.

1. Use as a certification mark. Certification marks can be obtained in some jurisdictions for compliance with defined standards. The holder of a certification mark is not the authorised user, producer or provider of the certified goods or services, but rather the certifier, which exercises legitimate control over use of the certification mark. Certification marks may be used together with the individual trade mark of the producer of the certified goods or of the provider of the certified

services. The essential function of a certification mark is different from the essential function of an individual trade mark: while the latter primarily serves to identify the origin of goods and services, the former serves to certify that the goods or services meet certain established standards and possess particular characteristics. Therefore, use as a certification mark does not serve as use as an individual trade mark, because it does not guarantee to consumers that the goods or services come from a single undertaking under the control of which the goods or services are manufactured or supplied and which, consequently, is responsible for the quality of those goods or services (08/06/2017, C‑689/15, Cotton Flower, EU:C:2017:434, § 45).

2. Use as a Geographical Indication (GI). The essential function of GIs is to designate the origin of goods as being from a particular region or locality. This is in contrast with the main function of an individual trade mark, namely to serve as an indicator of commercial origin. When a GI is contained within an individual mark that guarantees to consumers that the goods which it designates come from a single undertaking under the control of which those goods are manufactured and which is responsible for the quality of those goods, the opponent must submit proof of use as an individual mark (07/06/2018, T‑72/17, Steirisches Kürbiskernöl (fig.), EU:T:2018:335, § 52; 17/10/2019, C‑514/18 P, Steirisches Kürbiskernöl (fig.), EU:C:2019:878, § 37-43). Evidence of use as a GI (e.g. general statements of Regulatory Councils) cannot serve for proving use as an individual mark. For more information on geographical indications see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 10, Trade Marks in Conflict with Geographical Indications (Article 7(1)(j) EUTMR. Depending on the circumstances, the following situations may be suitable for supporting genuine use of the registered trade mark. That is because use of the sign can serve more than one purpose at the same time. Consequently, the following uses can also be use of the sign as a trade mark. However, the purpose for which a sign is used needs to be assessed individually. 1. Use of a sign as a business, company or trade name can be regarded as trade mark use provided that the relevant goods or services themselves are identified and offered on the market under this sign (02/06/2021, T-17/20, GAMELAND (fig.) / Gameloft, EU:T:2021:313, § 32-33; 13/04/2011, T-209/09, Alder Capital, EU:T:2011:169, § 55-56). In general, this is not the case when the business name is merely used as a shop sign (except when proving use for retail services), or appears on the back of a catalogue or as an incidental indication on a label (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 47).

In principle, use of the sign as a company name or trade name, is not, of itself, intended to distinguish goods or services. The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business that is being run. Accordingly, where use of a company name, trade name or shop name is limited to identifying a company or designating a business that is being run, such use cannot be considered as being ‘in relation to goods or services’ (15/03/2023, T‑194/22, zelmotor (fig.), EU:T:2023:130, § 57;

11/09/2007, C-17/06, Céline, EU:C:2007:497, § 21; 13/05/2009, T-183/08, Jello Schuhpark II, EU:T:2009:156, § 31-32).

Use of a business, company or trade name can be regarded as use ‘in relation to goods’ where: a. a party affixes the sign constituting its company name, trade name or shop name to the goods or; b. even though the sign is not affixed, the party uses the sign in such a way that a link is established between the company, trade or shop name and the goods or services (11/09/2007, C-17/06, Céline, EU:C:2007:497, § 21-23).

Provided that either of these two conditions is met, the fact that a word element is used as the company’s trade name does not preclude its use as a mark to designate goods or services (30/11/2009, T-353/07, Coloris, EU:T:2009:475, § 38).

For example, the presentation of the business name at the top of order forms or invoices may, depending on how the sign appears on them, be suitable to support genuine use of the registered trade mark (06/11/2014, T‑463/12, MB, EU:T:2014:935, § 44‑45). Simultaneous use of the company name and the trade mark on invoices may, when the two indications can be clearly distinguished, prove use of the sign as an indicator of the commercial origin of the services provided, irrespective of the fact that the invoices may also show other sub-brands (03/10/2019, T‑666/18, ad pepper (fig.), EU:T:2019:720, § 82-84). However, mere use of a business name at the top of invoices without a clear reference to specific products/services is not sufficient. 2. Use of a sign as a domain name or as part of a domain name primarily identifies the website as such. However, depending on the circumstances, such use may also be use of a registered mark (this presupposes that it connects to a site on which the goods and services appear) (02/03/2022, T‑615/20, Mood media, EU:T:2022:109, § 89-91). The mere fact that the opponent has registered a domain name containing the earlier trade mark is not sufficient in itself to prove genuine use of the trade mark. It is necessary for the party to prove that the relevant goods or services are offered under the trade mark contained in the domain name.

6.1.1.2 Use of collective and certification marks

National and EU collective marks and certification marks can also constitute ‘earlier trade marks’ within the meaning of Article 8(2) EUTMR on which an opposition can be based and, as such, be subject to the requirement of use pursuant to Article 47(2) and (3) EUTMR. The requirements of the EUTMR relating to the conditions of use apply. However, the different function of these marks must be taken into account. The opponent must demonstrate that the authorised persons (see paragraph 7.3) used the collective or certification mark in accordance with its essential function.

The essential function of a collective mark is to distinguish the goods or services of the members of the association that is the proprietor of the mark from those of other undertakings (20/09/2017, C‑673/15 P & C‑674/15 P & C‑675/15 P & C‑676/15 P, DARJEELING (fig.) / DARJEELING et al., EU:C:2017:702, § 63). The specific characteristic of collective marks is to indicate the collective commercial origin of the goods or services, that is to say to indicate that certain products or services come from a member of a certain ‘collective’, which is the proprietor of the collective mark, and not an individual commercial origin as is the case with individual marks. Therefore, unlike an individual mark, a collective mark does not have the function of indicating to consumers ‘the identity of origin’ of the goods or services in respect of which it is registered. Manufacturers, producers, suppliers or traders who are affiliated with the association that is the proprietor of a collective mark do not have to form part of the same group of companies that manufacture or supply the goods or services under unitary control. In fact, they can be competitors, each of which uses, on the one hand, the collective mark indicating their affiliation with that association and, on the other, an individual mark indicating the identity of origin of their goods or services. However, like an individual mark, a collective mark must be used by the members of the association to create or preserve an outlet for the registered goods or services (12/12/2019, C‑143/19 P, EIN KREIS MIT ZWEI PFEILEN (fig.), EU:C:2019:1076). The essential function of a certification mark is not to indicate commercial origin, as for individual and collective marks, but to differentiate the goods and services that are certified by the proprietor of the mark as meeting established standards and possessing particular characteristics from those that are not thus certified. For the use of a certification mark to be considered genuine, it must be used in accordance with this essential function.

6.1.2 Use in the course of trade

6.1.2.1 Public use versus internal use

The use must be public, that is to say it must be external and apparent to actual or potential customers of the goods or services. Use in the private sphere or purely internal use within a company or a group of companies does not amount to genuine use (09/12/2008, C-442/07, Radetzky, EU:C:2008:696, § 22; 11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37; 09/09/2015, T-584/14, ZARA, EU:T:2015:604, § 33). The mark must be used publicly and outwardly in the context of commercial activity with a view to economic advantage for the purpose of ensuring an outlet for the goods and services that it represents (12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68, § 39; 30/04/2008, T-131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 38). Outward use does not necessarily imply use aimed at end consumers. For instance, the relevant evidence can validly stem from an intermediary, whose activity consists of identifying professional purchasers, such as distribution companies, to which the intermediary sells products it has had manufactured by original producers (21/11/2013, T-524/12, RECARO, EU:T:2013:604, § 25-26).

Relevant evidence can also validly come from a distribution company that forms part of a group. Distribution is a method of business organisation that is common in the course of trade and implies use of the mark that cannot be regarded as purely internal use by a group of companies, since the mark is also used outwardly and publicly (18/12/2024, T‑520/23, H 15 Gufic H 15 Gufic (fig.), EU:T:2024:906, § 38; 17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 32). Use of the mark must relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way. Mere preparation to use the mark — such as the printing of labels, producing of containers, etc. — is internal use and, therefore, not use in the course of trade for the present purposes (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37).

6.1.2.2 Commercial activity versus promotional activity

Where the mark is protected for goods or services of not-for-profit enterprises, and the mark has been used, the fact that there is no profit motive behind the use is irrelevant: ‘The fact that a charitable association does not seek to make profit does not mean that its objective cannot be to create and, later, to preserve an outlet for its goods or services’ (09/12/2008, C‑442/07, Radetzky, EU:C:2008:696, § 17). Goods and services offered free of charge may constitute genuine use when they are offered commercially, that is to say with the intention of creating or maintaining an outlet for those goods or services in the EU, as opposed to the goods or services of other undertakings, and therefore of competing with them (09/09/2011, T‑289/09, Omnicare Clinical Research, EU:T:2011:452, § 67-68). Mere use of the mark on promotional material for other goods cannot normally be considered as sufficient (indirect) evidence of use within the meaning of trade mark law for the type of promotional items on which the mark is or has been used. For example, giving away articles of clothing such as T-shirts and baseball caps at promotional events with the purpose of marketing a certain other product, such as a drink, cannot be considered as genuine use of the mark at issue for clothing. Likewise, if real-world goods are represented digitally in online or virtual environments merely for promoting or facilitating the purchase of real-world goods, this would not constitute ‘genuine use’ of the mark for virtual goods. Genuine use of the mark for virtual goods requires that they themselves must be offered commercially, that is to say with the intention of creating or maintaining an outlet for those virtual goods in the EU. The Office practice concerning ‘genuine use’ with regard to promotional articles has been confirmed by the Court.

6.1.2.3 Use in relation to goods

Trade marks have traditionally been used on goods (printed on the goods, on labels, etc.) or their packaging. However, showing use on goods or their packaging is not the only way of proving use in relation to goods. It is sufficient, if there is a proper connection between the mark and the goods, for the mark to be used ‘in relation to’ the goods or services, such as on brochures, flyers, stickers, signs inside places of sale, etc.

For example, when the opponent sells its goods only through catalogues (mail-order sales) or the internet, the mark may not always appear on the packaging or even on the goods themselves. In such cases, use on the (internet) pages where the goods are presented — provided it is otherwise genuine in terms of time, place, extent and nature — will generally be considered sufficient. The owner of the mark will not have to provide proof that the mark actually appeared on the goods themselves (12/07/2023, T‑27/22, th pharma (fig.) / Th (fig.), EU:T:2023:390, § 31-34).

However, the situation is different when a trade mark is used, for example, in a catalogue or advertisements, or on bags or invoices, to designate the retailer of the goods and not the goods themselves.

6.1.2.4 Use in relation to services

Marks cannot be directly used ‘on’ services. Therefore, use of marks registered for services will generally be on business paper, in advertising, or in some other way directly or indirectly related to the services. Where the use on such items demonstrates genuine use, such use will be sufficient.

6.1.2.5 Use in advertising

Trade marks fulfil their function of indicating the commercial origin of goods or services and symbols of the goodwill of their owner not only when they are actually used on or for goods or services, but also when they are used in advertising. In fact, the advertising or market communication function of trade marks is one of their most important functions.

Therefore, use in advertising will generally be considered as amounting to genuine use:

if the volume of advertising is sufficient to constitute genuine public use of the mark;

and if a relation can be established between the mark and the goods or services for

which the mark is registered.

The Court confirmed this approach in the Minimax case, where it held that use of the mark must relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37).

However, the outcome in a particular case will depend very much on the individual circumstances, as demonstrated by the following examples:

Where advertising is carried out in parallel with the marketing of goods and services and there is proof of both activities, advertising will support the genuineness of the use.

Advertising in advance of the actual marketing of goods and services — if it is with a view to establishing a market for the goods or services — will generally be considered to constitute genuine use.

Whether mere advertising, without any current or future plans to actually market goods or services, constitutes genuine use appears doubtful. As in most other situations, the outcome will depend on the circumstances of each case. For example, 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.

6.1.2.6 Use on the internet

The standard applied when assessing evidence in the form of printouts from the internet is no stricter than when evaluating other forms of evidence. Consequently, the presence of the trade mark on websites can show, inter alia, the nature of its use or the fact that products or services bearing the mark have been offered to the public. However, the mere presence of a trade mark on a website is, in itself, not sufficient to prove genuine use unless the website also shows the place, time and extent of use or unless this information is otherwise provided.

The value in terms of evidence of internet extracts can be strengthened by submitting evidence that the specific website has been visited and, in particular, that orders for the relevant goods and services have been made through the website by a certain number of customers in the relevant period.

As to the relevant period, the date of the information on the internet or in online databases is to be shown.

The evidence submitted must show that the online transactions were connected with the goods or services designated by the mark.

Whereas the nature of the mark and, to a certain extent, the time (as seen above) and place are less complex elements to prove, the extent of use presents more difficulties if only evidence of internet use is provided. It should be considered that internet transactions tend to eliminate most of the ‘traditional’ evidence of sales such as invoices, turnover and taxation documents. New ‘electronic’ evidence tends to substitute them, or has already substituted them, as certified means of payment, orders and confirmations thereof, and registrations of safe transactions.

For further information on evidence originating from the internet, please see the Guidelines, Part A, Section 10, Evidence, 4.1 Online evidence and Part C, Opposition, Section 5, Trade marks with reputation (Article 8(5) EUTMR), paragraph 3.1.4.4.

6.2 Use of the mark as registered or of a variation thereof

When assessing genuine use of a trade mark, it must be taken into account that trade marks are used in a commercial context, on products, packaging, information and advertising materials, etc. They are normally used together with other product

information, marketing messages, decorative elements and often with other marks (individual, collective or certification marks) or geographical indications and related symbols. Therefore, verifying whether the mark was used ‘as registered’ may prove to be a challenging exercise. This section deals with (i) simultaneous use of independent marks and (ii) use in a different form that does not alter the distinctiveness of the mark as registered. Article 18(1)(a) EUTMR provides that, apart from use of the mark in its registered form, use of the trade mark in a form differing in elements that do not alter the distinctive character of the mark as registered also constitutes ‘use of the trade mark’. This applies regardless of whether the mark as used is also the subject of a separate trade mark registration of the proprietor. The purpose of this provision is to allow the proprietor, in the commercial exploitation of the mark, to make variations in the mark that, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 50). In accordance with the purpose of that provision, where the mark used in trade differs from the form in which it was registered, the difference must be such that the two can still be regarded as broadly equivalent. Endeavouring to converge trade mark practices, the European Union Intellectual Property Network published a Common Communication on the Common Practice the Use of a Trade Mark in a Form Differing from the One Registered (CP8) ( ). This section of the Guidelines is in line with CP8.

6.2.1 Use in the form as registered – simultaneous use of independent marks

Trade marks are often used together with other marks, for example, to indicate a house mark and a sub-brand. This constitutes use of a mark in the same form as registered, in parallel with, but independently from, other marks (simultaneous use of independent marks). This is different from use of a mark in a different form than the one registered (08/12/2005, T‑29/04, Cristal Castellblanch, EU:T:2005:438, § 33, 34; 06/11/2014, T‑463/12, MB, EU:T:2014:935, § 43). Consequently, in the case of simultaneous use of independent marks, the question of whether the distinctive character of the mark as registered has been altered does not even arise and Article 18(1)(a) EUTMR is not applicable. Accordingly, use of a mark without any modification, including simultaneous use with separate, independent marks, is covered by the first subparagraph of Article 18(1) EUTMR, not by Article 18(1)(a) EUTMR. To establish simultaneous use, what has to be determined is whether the marks in question, despite being used together, remain independent from each other and whether they will be perceived in this way by the public. This is in contrast to where the public will instead perceive them as forming a unit and not as ‘separate, independent

marks’. In principle, a visual and/or conceptual interaction between the components that results in an inseparable unit would preclude those components from being perceived as ‘separate, independent marks’. This requires a global assessment of various factors, such as: the intrinsic characteristics of the marks (dominant and distinctive elements; their

respective position; use in a different size, typeface or colour; presence or absence of syntactical, grammatical or conceptual connections, etc.); the way the marks are presented in the evidence of use and the context of use (the

business practices in the trade sector concerned, nature of the marks, i.e. company names, house marks, product-line identifiers, sub-brands etc.); specific evidence capable of establishing that the marks are perceived

independently by the consumers. A lack of evidence of the independent use and perception of the mark as registered does not preclude assessing the question of simultaneous use on the basis of the intrinsic characteristics of the marks and the general experience of trade practices in the relevant trade sector.

Where a distinctive word is superimposed over the mark as registered consisting of a figurative element, pattern or a shape of a low distinctive character, it may prove difficult to determine whether it is a case of simultaneous use or of an alteration to the earlier mark. The question to be asked is whether the original mark is still perceived independently despite the superimposition of the distinctive word. If it is, it will be treated as simultaneous use. As stated in the judgment of 18/04/2013, C‑12/12, Colloseum Holding, EU:C:2013:253, § 35, a registered trade mark that is used only as part of a composite mark or in conjunction with another mark must continue to be perceived as indicative of the origin of the product at issue for that use to be covered by the term ‘genuine use’ within the meaning of Article 15(1) of Regulation No 40/94. ( ) On the other hand, if it cannot be established that the original figurative, shape, pattern mark is perceived as an independent mark, this is not a scenario of ‘simultaneous use’ and the case must be assessed under the rules of alteration of distinctive character (see paragraph 6.2.2.1.2). Conversely, where the mark as registered is a figurative or shape mark that is not of a low distinctive character, the superimposition of a distinctive word will normally not

affect the capability of that figurative or shape mark to be perceived as an independent mark, as in the following examples of simultaneous use.

6.2.2 Use in a form different from the one registered

Where simultaneous use of independent marks is excluded, the difference in the mark as used must be assessed under Article 18(1)(a) EUTMR to determine whether it alters the distinctive character of the mark as registered. Essentially, what will be assessed is whether the mark as used constitutes an acceptable or unacceptable ‘variation’ of its registered form. That assessment consists of two steps. The first step is to clarify what is to be regarded as the distinctive character of the mark as registered by establishing which elements contribute to the distinctive character and to what extent they do so (‘the distinctive essence of the mark’). This requires an assessment of the distinctive and visually dominant character of the elements of the mark as registered based on the intrinsic qualities of each, their relative position within the arrangement of the mark and their interactions. The second step is to identify the differences in the mark as used and evaluate the impact of the variations. It should be established whether that distinctive essence of the mark as registered is present, missing or modified in the mark as used. This requires an assessment of the distinctive and dominant character of the added, omitted or modified components in the mark as used, based on the intrinsic qualities of each, their relative position within the arrangement of the mark and their interactions. There is interdependence between the strength of the distinctive character of a mark and the effect of any variation. Marks of a greater distinctive character may be less influenced by variations than marks of a limited distinctive character. Added or omitted elements are more likely to affect the distinctive character of marks of limited distinctive character (10/10/2018, T‑24/17, D-TACK / TACK et al., EU:T:2018:668, § 47 and the case-law cited therein). The practices of the relevant trade sector and the perception of the relevant public must also be taken into account. The following paragraphs contain guidance and examples illustrating the impact of additions (paragraph 6.2.2.1), omissions (paragraph 6.2.2.2) and modifications of other characteristics, such as position or proportions (paragraph 6.2.2.3), depending on whether the mark as registered is of an average or a low degree of distinctive

character. Although the mark as used may contain a combination of these variations, including an omission of an element and addition of another (replacement), the principles below may also serve as guidance for such cases.

6.2.2.1 Additions

6.2.2.1.1 Mark as registered distinctive to an average degree

The following main scenarios can be distinguished. Addition of a non-distinctive or weakly distinctive element

Addition of a symbol or other orthographic character

Addition of a distinctive (interacting) element

Addition of a non-distinctive or weakly distinctive element

In general, the addition of a non-distinctive or weakly distinctive element (be it a word or figurative element, including stylisation or colour) does not alter the distinctive character of the mark as registered, regardless of whether these elements are visually dominant or not. Examples where the distinctive character is not altered:

Addition of a symbol or other orthographic character

Adding a punctuation mark (such as a dot or an exclamation mark), another orthographic character (such as an apostrophe, accent, hyphen or space) or other symbols (such as the plural or possessive symbol or the abbreviated company form), does not normally alter the distinctive character of the mark as registered.

However, if the new element changes the perception of the mark, for example by changing the meaning of the mark as registered, a different conclusion may be justified.

Examples where the distinctive character is not altered:

Example where the distinctive character is altered:

Addition of a distinctive (interacting) element

In principle, the addition of a distinctive element that interacts with the mark as registered in such a manner that it can no longer be perceived independently, but rather as forming a unit (thus excluding simultaneous use of several marks) alters the distinctive character of the mark as registered.

Examples where the distinctive character is altered:

6.2.2.1.2 Mark as registered distinctive to a low degree

The following main scenarios can be distinguished.

Addition of a non-distinctive or weakly distinctive element.

Addition of a distinctive (interacting) element.

Addition of a non-distinctive or weakly distinctive element

When the mark as registered has a low degree of distinctive character, adding even a non-distinctive or weakly distinctive element may alter its distinctive character. Therefore, a case-by-case assessment is particularly important.

Examples where the distinctive character is altered:

Example where the distinctive character is not altered:

Addition of a distinctive (interacting) element

The addition of a distinctive element to a mark that has a low degree of distinctive character generally results in an interaction between the two, such that the mark as registered will no longer be perceived independently. This alters the distinctive character of the mark as registered.

Example where the distinctive character is altered:

6.2.2.2 Omissions

The omission of an element contributing to the distinctive character of the mark as registered is likely to alter its distinctive character.

6.2.2.2.1 Mark as registered distinctive to an average degree

The following main scenarios can be distinguished.

Omission of a non-distinctive element

Omission of a weakly distinctive element

Omission of a symbol or other orthographic character

Omission of a distinctive element

Omission of a non-distinctive element

Where the omitted element is non-distinctive, the distinctive character of the mark as registered will not be altered.

Examples where the distinctive character is not altered:

Omission of a weakly distinctive element

Where the omitted element has a low degree of distinctive character, the distinctive character of the mark as registered will normally not be altered. However, where that weakly distinctive element contributes significantly to the distinctive character of the mark as registered, is visually dominant or interacts with other elements, a different outcome may be justified. Therefore, a case-by-case assessment is particularly important.

Examples where the distinctive character is not altered:

Example where the distinctive character is altered:

Omission of a symbol or other orthographic character

Omitting a punctuation mark, orthographic character (such as an apostrophe, accent, hyphen or space) or other symbols (such as the plural or possessive symbol or the abbreviated company form) does not normally alter the distinctive character of the mark as registered.

Examples where the distinctive character is not altered:

Omission of a distinctive element

Omitting a distinctive element, whether it be a word or a figurative element, usually alters the distinctive character of the mark as registered even when such elements are not dominant, provided they are not negligible.

Examples where the distinctive character is altered:

6.2.2.2.2 Mark as registered distinctive to a low degree

The following main scenarios can be distinguished. Omission of a non-distinctive distinctive element

Omission of a weakly distinctive element

As a mark that has a low degree of distinctive character contains no elements of average distinctive character, the scenario of ‘omission of a distinctive element’ does not exist.

Omission of a non-distinctive element

When the mark as registered has a low degree of distinctive character and the omitted element is not distinctive, generally, the distinctive character of the mark as registered will not be altered. However, a different outcome may be justified in cases where the distinctive character of the mark as registered stems exclusively from the combination of non-distinctive elements. Example where the distinctive character is altered:

Omission of a weakly distinctive element

When the mark as registered has a low degree of distinctive character, the omission of a weakly distinctive element, may result in an alteration of the distinctive character of the mark as registered, particularly if the omitted element is visually dominant or in cases when the distinctive character of the mark as registered stems from the combination of elements with a low degree of distinctive character. Therefore, a caseby-case assessment is particularly important. Examples where the distinctive character is altered:

6.2.2.3 Modification of other characteristics

Changing the position or proportions of the elements of the mark as registered or switching between upper/lower case typeface, as long as it does not significantly depart from the usual way of writing, does not, in general, affect the distinctive character of the mark as registered.

However, irregular capitalisation or other additions that may influence how the elements are perceived (e.g. where the inverse order of the verbal elements leads

to a different meaning or where a graphically highlighted part of the verbal element has a meaning of its own) may lead to a different conclusion.

Examples where the distinctive character is not altered:

Example where the distinctive character is altered:

6.3 Use in connection with the registered goods and services

In accordance with Article 18 EUTMR, the mark must be used for the goods or services for which it is registered in order to be enforceable. In accordance with the first sentence of Article 47(2) EUTMR, the earlier registered mark must have been put to genuine use in connection with the goods or services in respect of which it is registered and which the opponent cites as justification for its opposition. The third sentence of Article 47(2) EUTMR stipulates that if the earlier trade mark has been used for part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered for only that part of the goods or services. It is not appropriate to accept proof of use for goods or services that are not the same as those for which the mark is registered but are only somehow ‘associated’ to them. The concept of similarity of goods and services is not a valid consideration within this context (28/06/2023, T-645/22, CS jeans your best fashion partner, EU:T:2023:363, § 37). Example: The earlier mark is registered for clothing in Class 25. The evidence relates to ‘boots’ only. Conclusion: The mark has not been used for the goods for which it is registered.

The analysis of genuine use must in principle extend to all of the registered goods and/or services on which the opposition is based and for which the EUTM applicant has made an explicit request for proof of use. However, in situations where it is clear that likelihood of confusion can be established on the basis of some of the earlier goods and/or services, the Office’s analysis of genuine use need not extend to all the earlier goods and/or services but instead may focus on only those goods and/or services sufficient for establishing identity/similarity to the contested goods and/or services.

In other words, since likelihood of confusion can be established on the basis of a finding of genuine use for some of the earlier goods and/or services, it is unnecessary to examine the evidence of use submitted by the opponent with respect to the remaining earlier goods and/or services.

The following sections include a number of guidelines to help establish whether the earlier trade mark has been effectively used for the registered goods and services. For further details, see the Guidelines, Part C, Opposition, Section 2, Double Identity and Likelihood of Confusion, Chapter 2, Comparison of Goods and Services and, in particular, the practice regarding the use of all the general indications in the class heading, and the Guidelines, Part B, Examination, Section 3, Classification.

6.3.1 Relation between the registered goods and services and those used

It must always be carefully assessed whether the goods and services for which the mark has been used fall within the category of the registered goods and services.

Examples

6.3.2 Relevance of the classification

Although the Nice Classification was adopted for exclusively administrative purposes, its class numbers and explanatory notes may be relevant for determining the nature and purpose of the goods or services for which a trade mark is registered and for which genuine use must be proven. This is particularly the case where terms in the specification are general and may cover different goods or services (06/10/2021, T‑397/20, Juvederm, EU:T:2021:653, § 35; 26/04/2023, T‑794/21, Mouldpro, EU:T:2023:211, § 23). Consequently, the meaning of the goods or services at issue and their scope of protection should be interpreted with regard to the class in which they are classified (26/04/2023, T‑794/21, Mouldpro, EU:T:2023:211, § 28, 36). For example, a trade mark is registered for ‘bread’ in Class 30 and use is shown for ‘soft pastries covered with icing or coated with chocolate’. When it comes to deciding whether the latter products come within the term ‘bread’, it is relevant that Class 30 contains a category for ‘pastries’, to which those products belong for classification purposes, and another category ‘bread’, to which they do not belong (01/09/2021, T‑697/20, Donas dulcesol / Dulcesol, EU:T:2021:526, § 38). Similarly, if a trade mark is registered for ‘coffee based beverages’ in Class 30 and it is used for ‘energy drinks flavoured with coffee’, this use cannot amount to genuine use of the former. This is because ‘energy drinks’ are non-alcoholic beverages that fall within Class 32, whereas beverages with a coffee base, which are included in Class 30 and expressly excluded from Class 32, refer more to beverages in which coffee constitutes the predominant and characteristic element (10/11/2021, T‑758/20 & T‑759/20, Monster, EU:T:2021:776, § 49). The impact of classification is even more apparent when similar categories of goods or services have been classified in different classes because the specific purpose differs. For instance, ‘footwear’ can be classified in several classes depending on

the intended purpose: ‘orthopaedic footwear’ in Class 10 and ordinary ‘footwear’ in Class 25. In such cases, the class chosen can be crucial. If the mark is registered for ‘footwear’ in Class 25, the class chosen indicates that these goods are ordinary footwear. Consequently, if the evidence shows use for ‘orthopedic footwear’ only, genuine use of the mark has not been proved. Nevertheless, it can be that the term for which the mark is registered in accordance with the Nice Classification in force on the date of application of the mark clearly identifies goods or services that belong to a different class (06/10/2021, T‑372/20, Juvederm, EU:T:2021:652, § 56-57). In these exceptional cases, the wording itself is decisive to determine the actual scope of protection (see, to this effect, 06/10/2021, T‑397/20, Juvederm, EU:T:2021:653, § 45). For example, if ‘orthopedic footwear’ is registered in Class 25 and the mark is used for orthopedic footwear (which clearly belongs to Class 10) genuine use would be shown. This is because the scope of protection of the specific term ‘orthopedic footwear’ remains clear irrespective of the wrong class number (06/10/2021, T‑372/20, Juvederm, EU:T:2021:652, § 55, 62). The classification of a product pursuant to other rules of EU law is, in principle, not decisive for the assessment whether the goods or services for which the mark was used are the same as those for which the mark is registered (11/01/2023, T‑346/21, Gufic, EU:T:2023:2, § 98). The decisive factor for this assessment is how the goods or services are perceived by the relevant public (11/01/2023, T‑346/21, Gufic, EU:T:2023:2, § 100). For more on the relevance of the Nice Classification see: Part B, Examination, Section 3, Classification, paragraph 4.2.1, General principles and 4.2.2 Influence of classification on the scope of protection;Part C, Opposition, Section 2, Double identity and likelihood of confusion, Chapter 2, Comparison of goods and services, paragraph 1.2.3, Conclusions to be drawn from the structure of the Nice Classification.

6.3.3 Use for subcategories of goods/services

This part deals with the extent of protection granted where a trade mark is registered for categories of goods and services (e.g., clothing in Class 25), not for specific items (e.g., socks in Class 25).

6.3.3.1 Main principles from case-law

The concept of partial use and the reasons for establishing subcategories where use is only shown for part of broader categories was first developed by the General Court in the Aladin case (14/07/2005, T‑126/03, ALADIN / ALADDIN, EU:T:2005:288). According to the Court, the objective pursued by the requirement is not so much to determine precisely the extent of the protection afforded to the earlier trade mark by reference to the actual goods or services for which the mark was used at a given time as to ensure more generally that the earlier mark was actually used for the goods or services in respect of which it was registered. The last sentence of Article 47(2) EUTMR must be interpreted as seeking to prevent a trade mark that has been used in

relation to part of the registered goods or services being afforded extensive protection merely because it has been registered for a wide range of goods or services. It must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner (14/07/2005, T‑126/03, ALADIN / ALADDIN, EU:T:2005:288, § 43-46). The Court further held that the provisions of Article 47 EUTMR allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use of the mark has been established: (i) are a limitation on the rights that the proprietor of the earlier trade mark gains from its registration and; (ii) must be reconciled with the legitimate interest of the proprietor in being able in the future to extend its range of goods or services within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection that registration of the trade mark confers on the proprietor. (14/07/2005, T‑126/03, ALADIN / ALADDIN, EU:T:2005:288, § 51, emphasis added.) This establishes the need to balance, on the one hand, the general interest of maintaining protection in relation to the goods and services for which the mark has been used and, on the other, the legitimate interest of the proprietor in expanding the range of goods or services during the period of protection of its trade mark. When striking this balance, it is necessary to take account of the breadth of the categories of goods or services for which the earlier mark is registered, in particular the extent to which the categories concerned are described in general terms for registration purposes, and to do so in light of the goods or services for which genuine use has actually been established (14/07/2005, T‑126/03, ALADIN / ALADDIN, EU:T:2005:288, § 44). It follows that: if a trade mark has been registered for a category of goods or services

which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings (and, by analogy, in cancellation proceedings), only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong; if a trade mark has been registered for [a category or categories of] goods or

services defined so precisely and narrowly that it is not possible to make any significant subdivisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category or categories for the purposes of the opposition (or, by analogy, of the cancellation).

(14/07/2005, T‑126/03 , ALADIN / ALADDIN, EU:T:2005:288, § 45; 16/07/2020, C‑714/18 P , tigha / TAIGA, EU:C:2020:573, § 43) Therefore, the assessment of partial use requires a two-step examination. 1. Firstly, whether, in view of the goods or services for which use is demonstrated, the category of goods or services for which the mark is registered is so broad that it can be divided, in an objective and non-arbitrary manner, into several distinct and coherent subcategories capable of being viewed independently. 2. Secondly, defining (if necessary) these subcategories in accordance with the relevant criteria (see point 6.3.3.3) to which the specific goods and services for which genuine use has been proven belong.

6.3.3.2 Earlier mark registered for broad category of goods/services

If the earlier mark has been registered for a broad category of goods or services and the owner provides evidence of use for specific goods or services falling within this category, this raises the question of whether the evidence submitted is to be regarded as proof of use for the subcategory or subcategories to which these specific goods or services belong, or for the broad category specified in the registration. The Court held that if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong (14/07/2005, T-126/03, ALADIN / ALADDIN, EU:T:2005:288, § 45). However, to maintain protection for the entire broad category, it is necessary for the owner to prove genuine use of goods or services for each of those independent categories or subcategories (16/07/2020, C‑714/18 P, tigha / TAIGA, EU:C: 2020:573, § 43; 22/10/2020, C‑720/18 & C‑721/18, Testarossa, EU:C:2020:854, § 38-39). When a mark is used for specific goods or services that indicate use in one or several independent subcategories, genuine use should be accepted only for those subcategories, but not for the entire broad category. In this regard, appropriate reasoning should be given for defining one or several independent and coherent subcategories (10/04/2024, T‑161/23, Rebell, EU:T:2024:218, § 36). Based on the evidence submitted by the owner, it must be explained whether use has been shown in relation to only part of the initial broad specification that constitutes a subcategory.

In the case of a mark registered for a broad category of goods and services that is not sufficiently clear and precise to enable the competent authorities and economic operators, on that sole basis, to determine the scope of protection, it should be possible, in principle, to determine the precise scope through proof of use (29/01/2020, C‑371/18 , SKY, EU:C:2020:45, § 68‑70; 04/03/2020, C‑155/18 P , C‑156/18 P , C‑157/18 P & C‑158/18 P , BURLINGTON / BURLINGTON ARCADE et al., EU:C:2020:151, § 136). The general principles stated above apply. For further information on unclear and imprecise terms, see the GuidelinesPart C, Opposition, Section 2, Double Identity and Likelihood of Confusion, Chapter 2, Comparison of Goods and Services, paragraph 1.5.2.

6.3.3.3 Criteria for defining independent subcategories

An independent subcategory of goods or services must, first, reflect as faithfully and specifically as possible the goods or services for which the trade mark has actually been used and, secondly, be coherent,homogeneous and the result of a division which is significant and not arbitrary (16/10/2024, T‑194/23, FRACTALIA (fig.), EU:T:2024:696, § 154-156).

In order to define a coherent subcategory of goods or services capable of being viewed independently, the Court held that the criterion of the purpose and intended use of the product or service in question is of fundamental importance, as consumers employ this criterion before making a purchase (13/02/2007, T‑256/04, RESPICUR / RESPICORT, EU:T:2007:46, § 29-30; 23/09/2009, T‑493/07, FAMOXIN / LANOXIN, EU:T:2009:355, § 37; 16/07/2020, C‑714/18 P, tigha / TAIGA, EU:C: 2020:573, § 44; 09/03/2022, T‑766/20, Stones, EU:T:2022:123, § 68; 07/06/2023, T‑63/22, BROOKS ENGLAND (fig.) / Brooks, EU:T:2023:312, § 50; 12/07/2023, T‑585/22, Artresan, EU:T:2023:392, § 68). The aim of such criterion is not to provide an abstract or artificial definition of subcategories of goods or services, therefore, it must be applied coherently and specifically (16/07/2020, C-714/18 P, tigha / TAIGA, EU:C:2020:573, § 50; 20/12/2023, T-221/22 & T-242/22, Lutamax, EU:T:2023:858, § 69). If the goods or services concerned have several purposes, it is not possible to create, in a non-arbitrary manner, separate subcategories by considering in isolation each of those purposes (16/07/2020, C‑714/18 P, tigha / TAIGA, EU:C: 2020:573, § 51). The nature of the goods and services and their characteristics are not, as such, relevant to define subcategories of goods or services (12/07/2023, T‑585/22, Artresan, EU:T:2023:392, § 68; 23/09/2020, T‑677/19, Syrena, EU:T:2020:424, § 116 and the case-law cited). It cannot, however, be ruled out that, from the point of view of the relevant consumer, some of the characteristics of the goods or services (e.g. their nature) are of significant importance in directing their choice as they are closely linked to the purpose and intended use of those goods or services in their eyes (24/01/2024, T‑603/22, ROYAL MILK (fig.), EU:T:2024:29, § 33, 42). For example, the Court held that ‘milk powder’ constitutes an independent subcategory of the broader category of goods ‘milk and milk products’ after considering the characteristics of the former, namely, that it has a much longer shelf life than liquid milk, does not need to be refrigerated and it is easier to transport on account of its reduced volume. The Court concluded that, since the characteristics of milk powder are so different from those of liquid milk, those goods do not have the same purpose or intended use in the eyes of the relevant consumer (24/01/2024, T-603/22, ROYAL MILK (fig.), EU:T:2024:29, § 34-35). Other criteria that are, as such, not relevant for defining subcategories: The geographical origin of the goods is not relevant. Even if the geographical

origin of wines is an important factor when they are being chosen, such a factor is not so important that wines with different appellations of origin could constitute subcategories of goods that could be viewed autonomously (30/06/2015, T‑489/13, VIÑA ALBERDI / VILLA ALBERTI, EU:T:2015:446, § 37; 17/01/2019, T‑576/17, EL SEÑORITO / SEÑORITA, EU:T:2019:16, § 45-46). The fact that the goods are aimed at different publics or are sold in different

shops (16/07/2020, C‑714/18 P, tigha / TAIGA, EU:C: 2020:573, § 51). The sole fact that, according to an economic analysis, the goods or services belong

to different markets or different market segments. The only relevant question in that regard is whether a consumer who wishes to purchase a product or service falling within the category of goods or services covered by the trade mark in

question will associate all the goods or services belonging to that category with that mark (16/07/2020, C‑714/18 P, tigha / TAIGA, EU:C: 2020:573, § 51; 22/10/2020, C-720/18 & C-721/18, Testarossa, EU:C:2020:854, § 42-44). The subjective characteristics of the goods or services, such as ‘high class’

or ‘luxury’, are also not relevant for the definition of a subcategory of goods or services, since they do not identify a clear category of goods or services (05/10/2017, T-336/16, VERSACE 19.69 ABBIGLIAMENTO SPORTIVO S.R.L. VIA DANIELE CRESPI, 1 –BUSTO ARSIZIO MILANO – ITALY – (fig.) / VERSACE et al., EU:T:2017:691, § 58; 22/10/2020, C-720/18 & C-721/18, Testarossa, EU:C:2020:854, § 45, 49).

Examples of interpretation of the criterion of ‘purpose and intended use’ in specific sectors: Pharmaceutical preparations

The Court held that the purpose and intended use of pharmaceutical preparations are expressed in their therapeutic indication. Thus, the therapeutic indication, namely, the indication of the type of illness it is intended to treat is the key for defining the relevant subcategory of pharmaceutical products (13/02/2007, T‑256/04, RESPICUR / RESPICORT, EU:T:2007:46, § 30). Other criteria, such as dosage form (e.g. tablets, liquid), active ingredients, whether it is sold on prescription or over the counter, or the method of administering the medicine (e.g. dissolving, injection) are irrelevant in this context (13/02/2007, T‑256/04, RESPICUR / RESPICORT, EU:T:2007:46, § 127). The following subcategories for pharmaceutical preparations were established by the Court:

Conversely, the General Court found that dietary supplements adapted for medical or dietetic use do not necessarily have a precise and specific therapeutic indication. Therefore, the systematic identification of coherent subcategories within the category of dietary supplements adapted for medical or dietetic use on the basis of their therapeutic indication must be ruled out, since that type of product does not necessarily have such an indication (20/12/2023, T-221/22 & T-242/22, Lutamax, EU:T:2023:858, § 73; 12/07/2023, T‑585/22, ARTRESAN, EU:T:2023:392, § 75) (see examples in point 6.3.3.4 below).

Technology

The General Court held that the purpose and intended use of technologies, such as databases may be characterised by the market sectors or industry those databases target.

Beverages

In the field of alcoholic beverages, there is a coherent line of case-law confirming that subcategories are defined based on the specific purpose and intended use of the beverage, also taking aspects of the market reality into account.

6.3.3.4 Earlier mark registered for categories of goods and services that are precise and sufficiently narrow not to be subdivided

If a trade mark has been registered for [categories of] goods or services defined so precisely and narrowly that it is not possible to make any significant subdivision within the category concerned, then genuine use of the mark must be accepted for the entire category (14/07/2005, T-126/03, ALADIN / ALADDIN, EU:T:2005:288, § 45; 16/07/2020, C‑714/18 P, tigha / TAIGA, EU:C:2020:573, § 42-43).

As outlined above, the owner of a trade mark cannot be required to adduce evidence of use for all the conceivable variations of goods or services included within a precisely and narrowly defined category (14/07/2005, T‑126/03, ALADIN / ALADDIN, EU:T:2005:288, § 46; 13/02/2007, T‑256/04, RESPICUR / RESPICORT, EU:T:2007:46, § 24; 08/02/2018, T‑879/16, Vieta (fig.), EU:T:2018:77, § 62). Therefore, the scope of protection cannot be limited to the specific goods and services for which genuine use has been shown and which exemplify the precise and narrowly defined category of the

registration, as this would be equal to stripping the trade mark of its protection. As long as the specific goods or services for which genuine use has been shown exemplify the category of the registration, genuine use must be accepted for the category as a whole, provided it cannot be divided other than in an arbitrary manner into further subcategories one of which at least would not include any of those goods or services.

In these circumstances, it is sufficient to require that the owner adduce proof of genuine use of the trade mark in relation to the part of the goods or services that fall into that homogeneous category (16/07/2020, C‑714/18 P, tigha / TAIGA, EU:C:2020:573, § 42).

6.3.4 Use of the mark on integral parts, aftersales services and secondhand market of the registered goods

In the Minimax judgment, the Court held that, in certain circumstances, use of the mark may be considered genuine also for ‘registered’ goods that had been sold at one time and were no longer available (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 40 et seq.). This may apply where the proprietor of the trade mark under which such goods had

been put on the market sells parts that are integral to the make-up or structure of the goods previously sold. The same may apply where the trade mark proprietor makes actual use of the mark

for aftersales services, such as the sale of accessories or related parts, or the supply of maintenance and repair services.

However, this finding of the Court should be interpreted strictly and applied only in very exceptional cases. In Minimax, the Court accepted use for goods other than those registered, which runs counter to the general rule laid down in Article 47(2) EUTMR. In the Testarossa judgment, the Court of Justice confirmed that, in principle, the subsequent resale of second-hand goods bearing the trade mark does not constitute genuine use (22/10/2020, C-720/18 & C-721/18, Testarossa, EU:C:2020:854, § 55). However, it held that the resale of second-hand goods bearing the trade mark by the proprietor can be taken into account as evidence of use of that mark. The fact that the proprietor of the trade mark cannot prohibit third parties from using his trade mark in respect of goods already put on the market under that mark does not mean that he cannot use it himself in respect of such goods. If the proprietor of the trade mark concerned actually uses that mark, in accordance with its essential function, which is to guarantee the identity of the origin of the goods for which it was registered, when reselling second-hand goods, such use is capable of constituting ‘genuine use’ (22/10/2020, C-720/18 & C-721/18, Testarossa, EU:C:2020:854, § 56-60).

6.3.5 Use for the sale of the manufacturer’s own goods

Retail services in Class 35 are defined in the explanatory note of the Nice Classification as … the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, through vending machines, mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes. It follows from that explanatory note that the concept of ‘retail services’ relates to three essential characteristics: firstly, the purpose of these services is the sale of goods to consumers; secondly, they are addressed to consumers with a view to enabling them to conveniently view and purchase the goods; and, thirdly, they are provided for the benefit of others (04/03/2020, C‑155/18 P, C‑156/18 P, C‑157/18 P & C‑158/18 P, BURLINGTON / BURLINGTON ARCADE et al., EU:C:2020:151, § 126). The ‘others’ benefiting from the ‘bringing together of a variety of goods’ are the various manufacturers looking for an outlet for their goods. The Court has held that the objective of retail trade is the sale of goods to consumers. This includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. Such activity consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question, rather than with a competitor (07/07/2005, C‑418/02, Praktiker, EU:C:2005:425, § 34). For example, the concept of ‘retail services’ includes a shopping arcade’s services aimed at consumers with a view to enabling them to conveniently view and purchase the goods, for the benefit of the businesses occupying the arcade concerned (04/03/2020, C‑155/18 P, C‑156/18 P, C‑157/18 P & C‑158/18 P, BURLINGTON / BURLINGTON ARCADE et al., EU:C:2020:151, § 130). The Court has confirmed that services can also be the subject of retail trade as there are situations in which a trader selects and offers an assortment of third-party services so that the consumer can choose among those services from a single point of contact (10/07/2014, C‑420/13, Netto Marken-Discount, EU:C:2014:2069, § 34). In the same way that advertising one’s own goods does not constitute use for advertising services in Class 35, there is no use for retail services in Class 35 where the manufacturer is merely selling its own goods from its shop or website. The sale by the manufacturer of its own goods is not an independent service but an activity covered by the protection conferred by registration for the goods. It would not be appropriate to equate the protection conferred by registration for goods in any of Classes 1 to 34 with that conferred by registration for Class 35 retail services. While manufacturers may provide ancillary services (such as maintaining an outlet with shop assistants, advertising, consultancy, after-sales services, etc.) in the course of the sale of their own goods, such activities fall within the concept of a remunerated ‘service’ only if they do not form an integral part of the offer for sale of the goods (10/07/2014, C‑421/13, Apple

Store, EU:C:2014:2070, § 26). Consequently, if a manufacturer uses a trade mark in relation to activities that form an integral part of the offer for the sale of its own goods, there is no use for retail services of such goods in Class 35. This interpretation is also confirmed by the examples of (infringing) use provided in Article 9(3) EUTMR. Nor would such sales activity be in line with the definition of ‘retail services’ as provided in the explanatory note to the Nice Classification and interpreted by the Court, because it does not entail any benefit for third-party manufacturers. Therefore, an essential characteristic of retail services is missing. Furthermore, genuine use must be consistent with the essential function of a trade mark. The trade mark used in relation to an outlet for the manufacturer’s own goods serves to distinguish those goods from goods of other manufacturers but not to distinguish the services provided through that outlet from those provided through other outlets. Manufacturers selling their own goods from their own shops compete on the market of the goods they are selling but do not compete on the retail services market, which targets third-party manufacturers. Operating a shop exclusively for the purpose of selling the manufacturer’s own goods excludes offering competing goods from third-party manufacturers. However, genuine use for retail services should not be denied if the opponent, when bringing together goods offered by third parties, includes, in addition to goods offered by other traders, goods that it itself manufactures.

7 Use by the proprietor or on its behalf

7.1 Use by the proprietor

According to Articles 18(1) and 47(2) EUTMR, it is in general the owner who has to put the earlier registered mark to genuine use. These provisions also cover use of the mark by the previous owner during its ownership.

7.2 Use by authorised third parties

According to Article 18(2) EUTMR, use of the mark with the consent of the proprietor is deemed to constitute use by the proprietor. This means that the owner must have given its consent prior to the use of the mark by the third party. Acceptance later is insufficient. A typical case of use by third parties is use made by licensees. Use by companies economically related to the trade mark proprietor, such as members of the same group of companies (affiliates, subsidiaries, etc.) is similarly to be considered as authorised use (30/01/2015, T-278/13, now, EU:T:2015:57, § 38; 07/09/2022, T 521/21, ad pepper the e-advertising network (fig.), EU:T:2022:520, § 27-29). Where goods are produced by the trade mark proprietor (or with its consent), but subsequently placed on

the market by distributors at wholesale or retail level, this is to be considered as use of the mark (17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 32; 16/11/2011, T-308/06, Buffalo Milke, EU:T:2011:675, § 73). At the evidence stage it is prima facie sufficient that the opponent only submits evidence that a third party has used the mark. The Office infers from such use, combined with the opponent’s ability to present evidence of it, that the opponent has given prior consent. This position of the Office was confirmed by judgment of 08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 25 (further confirmed 11/05/2006, C-416/04 P, Vitafruit, EU:C:2006:310). The Court pointed out that it was unlikely that the proprietor of a trade mark would be in a position to submit evidence if the mark had been used against its wishes. There was all the more reason to rely on that presumption, given that the applicant did not dispute the opponent’s consent. However, if, in light of the material on file, including arguments supported by evidence submitted by the applicant (see, to this effect, 14/12/2022, T‑636/21, EUROL LUBRICANTS, EU:T:2022:804, § 44), the Office has doubts, the burden is on the opponent to submit further evidence that it gave its consent prior to use of the mark. In such cases, the Office gives the opponent a further period of 2 months for the submission of such evidence.

7.3 Use of collective and certification marks by authorised users

Collective marks are generally used not by the proprietor association but rather by its members. As far as EU collective marks are concerned, this is reflected in Article 78 EUTMR, which provides that use by any authorised person satisfies the user requirement. Certification marks are not used by their proprietors but by authorised users, for the purpose of guaranteeing to consumers that the goods or services possess a particular characteristic. As far as EU certification marks are concerned, this is reflected in Article 87 EUTMR, which provides that use by the authorised person in accordance with the regulations governing the use of the certification mark satisfies the user requirement.

8 Irrelevance of unlawful use

Whether a mark has been used in a way that satisfies the use requirements of Articles 18 and 47 EUTMR requires a factual finding of genuine use. Article 18 EUTMR does not establish that the goods for which the mark is used have to be lawful or that the use must be made in good faith. The General Court found that the Office is not competent to rule on the compliance of products with certain regulatory standards. Use can be ‘genuine’ in this context even if the goods or services may not comply with

these standards (see, to this effect, 11/01/2023, T-346/21, GUFIC, ECLI:EU:T:2023:2, § 39). Use that is deceptive within the meaning of Article 7(1)(g) or Article 58(1)(c) EUTMR or under provisions of national law remains ‘genuine’ for the purpose of asserting earlier marks in opposition proceedings. The sanctions for deceptive use are invalidation or revocation, as the case may be, or a prohibition of use (provided for pursuant to Article 137(2) EUTMR). The same principle applies where use is made under an illegal licensing arrangement (for example arrangements violating the competition rules of the Treaty on the Functioning of the European Union or national rules). Similarly, the fact that use may infringe third-party rights is also irrelevant.

9 Justification of non-use

According to Article 47(2) EUTMR, the opponent may alternatively prove that there are justifiable reasons for non-use of its earlier registered mark. These reasons cover, as mentioned in the second sentence of Article 19(1) of the TRIPS agreement, circumstances arising independently of the will of the owner of the trade mark that constitute an obstacle to the use of the trade mark. As an exception to the obligation of use, the concept of proper reasons for nonuse is to be interpreted rather narrowly (12/06/2024, T-149/23, CRISTIANI (fig.), EU:T:2024:379, § 32-34). ‘Bureaucratic obstacles’ as such, that arise independently of the will of the trade mark proprietor, are not sufficient, unless they have a direct relationship with the mark, so much so that use of the trade mark depends on successful completion of the administrative action concerned. However, the criterion of a direct relationship does not necessarily imply that use of the trade mark is impossible; it might suffice that use is unreasonable. It must be assessed on a case-by-case basis whether a change in the undertaking’s strategy to circumvent the obstacle under consideration would make use of the mark unreasonable (30/06/2021, T-362/20, Reacciona, EU:T:2021:399, § 40, 44, 62-65, 76; 03/07/2019, C‑668/17 P, Boswelan, EU:C:2019:557, § 66-73 ). Thus, for example, the proprietor of a mark cannot reasonably be required to change its corporate strategy and sell its goods in its competitors’ sales outlets (14/06/2007, C-246/05, Le Chef de Cuisine, EU:C:2007:340, § 52).

9.1 Business risks

The concept of proper reasons must be considered to refer to circumstances arising independently of the will of the owner that make use of the mark impossible or unreasonable, rather than to circumstances associated with commercial difficulties it is experiencing (14/05/0008, R 855/2007-4, PAN AM, § 27; 09/07/2003, T-156/01, Giorgio

Aire, EU:T:2003:198, § 41; 18/03/2015, T-250/13, SMART WATER, EU:T:2015:160, § 67-69). Thus, financial difficulties encountered by a company as a result of an economic recession or due to its own financial problems are not considered to constitute proper reasons for non-use within the meaning of Article 47(2) EUTMR, as these kinds of difficulties constitute a natural part of running a business.

9.2 Government or court intervention

Import restrictions or other government requirements are two examples of proper reasons for non-use that are explicitly mentioned in the second sentence of Article 19(1) of the TRIPS agreement. Import restrictions include a trade embargo affecting the goods protected by the mark. Other government requirements can be a state monopoly, which impedes any kind of use, or a state prohibition of the sale of goods for reasons of health or national defence. Typical cases in this respect are regulatory procedures such as: clinical trials and authorisation for new medicines (18/04/2007, R 155/2006-1,

LEVENIA / LEVELINA); or the authorisation of a food safety authority, which the owner has to obtain before

offering the relevant goods and services on the market.

With regard to Court proceedings or interim injunctions, the following must be differentiated: On the one hand, the mere threat of litigation or a pending cancellation action against the earlier mark should not exempt the opponent from the obligation to use its trade mark in the course of trade. It is up to the opponent, being the attacking party in opposition proceedings, to conduct an adequate risk assessment of its chances to prevail in the litigation proceedings and to draw the appropriate conclusions from this evaluation as to whether or not to continue with use of its mark (18/02/2013, R 1101/2011-2, SMART WATER, § 40; 18/03/2015, T-250/13, SMART WATER, EU:T:2015:160).

On the other hand, for example, an interim injunction or a restraining court order in insolvency proceedings, imposing a general prohibition of transfers or disposals on the trade mark owner, can be a proper reason for non-use because it obliges the opponent to refrain from using its mark in the course of trade. Use of the mark contrary to such

a court order would make the trade mark owner liable to damage claims (11/12/2007, R 77/2006-1, MISS INTERCONTINENTAL (fig.), § 51).

9.3 Defensive registrations

The General Court has clarified that the existence of a national provision recognising what are known as ‘defensive’ registrations (i.e. of signs not intended to be used in trade on account of their purely defensive function in relation to another sign that is being commercially exploited) cannot constitute a proper reason for non-use of an earlier trade mark invoked as a basis of an opposition (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 46).

9.4 Force majeure

Further justifiable reasons for non-use are cases of force majeure that hinder the normal functioning of the owner’s enterprise.

9.5 Consequences of justification of non-use

Pursuant to the EUTMR, the 5-year grace period for non-use of an EUTM is calculated from the date of registration. The calculation is not affected by potential justified reasons for non-use. In other words, the expiry of the 5-year period is determined solely by the passage of time, regardless of any factual circumstances that may have contributed to the non-use of the mark. If justified reasons for non-use are proven, this may have consequences for the rights of the owner of the trade mark. Specifically, in a revocation action, the proprietor’s rights to the EUTM would not be revoked if justified non-use is established. Similarly, in opposition proceedings, justified non-use may be taken into account which means that the registered goods and services may still be considered relevant for the purposes of determining the scope of protection of the earlier mark. In any event, when reasons for non-use exist only for part of the relevant 5-year period, this may not always be considered justification for setting the proof-of-use requirement aside. This should be assessed taking into account the specific circumstances of the case, including, for instance, the length of time during which the proper reason for non-use applies (see, to this effect, 16/01/2023, R 0835/2022‑1, CRISTIANI (fig.), § 38; confirmed in 12/06/2024, T‑149/23, CRISTIANI (fig.), EU:T:2024:379).

10 Decision

10.1 Competence of the Office

The Office makes its own evaluation of the evidence of use submitted. This means that the probative value of the evidence submitted is evaluated independently of the observations submitted by the applicant in this respect. Assessment of the relevance, pertinence, conclusiveness and efficacy of evidence lies within the discretion and power of judgment of the Office, not the parties, and falls outside the adversarial principle that governs inter partes proceedings (01/08/2007, R 201/2006-4, OCB (fig.) / O.C.B., OCB (fig.), § 19; 14/11/2000, R 823/1999-3, SIDOL / SIDOLIN). A declaration by the applicant concluding that use has been proved does not, therefore, have any effect on the Office’s findings. The request for proof of use is a defence plea by the applicant. However, once the defence plea has been raised by the applicant, it is solely up to the Office to carry out the subsequent procedure and evaluate whether the evidence submitted by the opponent is to be regarded as of sufficient probative value. However, the applicant does have the possibility of formally withdrawing the request for proof of use (see paragraph 3.4.4 above). This is not contrary to Article 95(1) EUTMR, which stipulates that in inter partes proceedings the Office is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought. However, although the Office is bound by the facts, evidence and arguments provided by the parties, it is not bound by the legal value that the parties may give thereto. Hence, the parties may agree as to which facts have been proved or not, but may not determine whether or not these facts are sufficient to establish genuine use (01/08/2007, R 201/2006-4, OCB (fig.) / O.C.B., OCB (fig.), § 19; 14/11/2000, R 823/1999-3, SIDOL / SIDOLIN, § 20; 13/03/2001, R 68/2000-2, MOBEC / NOVEX PHARMA).

10.2 Need for assessing proof of use

A decision on whether the obligation of having genuinely used the registered mark has been fulfilled is not always necessary. When proof of use of the earlier rights has been requested by the applicant, the Office will also examine whether, and to what extent, use has been proved for the earlier marks, provided this is relevant for the outcome of the decision in question. The examination of proof of use is always necessary and obligatory in cases where the opposition is fully or partially successful on the basis of the earlier mark that was subject to the proof of use obligation. The Office may decide not to assess the proof of use if it is irrelevant to the outcome of the opposition, for example:

between the contested mark and the earlier mark that is subject to the proof of use obligation (10/02/2021, T‑117/20 , PANTHÉ (fig.) / P PANTHER (fig.) et al., EU:T:2021:81, § 64); if the opposition is fully successful on the basis of another earlier mark, which is not

application of this ground is not fulfilled. However, in the event that the earlier trade mark that was subject to the proof of use obligation was examined in the decision but the assessment of the proof of use has been omitted, this will be expressly stated in the decision with a brief justification.

10.3 Overall assessment of the evidence presented

As stated in more detail above (see paragraph 2.2 above), the Office has to evaluate the evidence submitted with regard to place, time, extent and nature of use in an overall assessment. A separate assessment of the various relevant factors, each considered in isolation, is not suitable (17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 31). The principle of interdependence applies, meaning that weak evidence with regard to one relevant factor (e.g. low sales volume) might be compensated by solid evidence with regard to another factor (e.g. continuous use over a long period of time). All the circumstances of the specific case have to be taken into account in conjunction with each other in order to determine whether the mark in question has been genuinely used. The particular circumstances can include, for example, the specific features of the goods/services in question (e.g. low- or high-priced; mass products versus special products) or the particular market or business area. Indirect/circumstantial evidence, under certain conditions even on its own, can also be suitable for proving genuine use. As the Office does not assess commercial success, even minimal use (but not mere token or internal use) can be sufficient to be deemed ‘genuine’, as long as it is viewed as warranted in the economic sector concerned to maintain or acquire a share in the market. The decision indicates what evidence was submitted. However, in general, only the evidence relevant for the conclusion is mentioned. If the evidence is found convincing, it suffices for the Office to indicate those documents that were used to come to this conclusion and why. If an opposition is rejected because the proof of use was not sufficient, neither likelihood of confusion nor Article 8(5) EUTMR, if claimed, is to be addressed.

10.4 Treatment of confidential information

Pursuant to Article 113(1) EUTMR, the Office must publish its decisions. On the other hand, pursuant to Article 114(4) EUTMR, upon the prior request of a party with a special interest in keeping parts of the file confidential, the data concerned must be kept confidential vis-à-vis the public ( ). However, the need to keep certain data confidential does not exempt the Office from the obligation to state the reasons for its decisions. Given the public nature of decisions, the justified interest of a party in keeping certain information confidential vis-à-vis the public has to be reconciled with the Office’s duty to state reasons. It may be problematic to reason without divulging confidential business data, but this can be done by referring to those data in a general manner and without disclosing concrete data. For example, the decision may refer to the invoices submitted, indicate the time span, frequency and territory of sales, the significance of the sales volumes they represent and whether they are sufficient to support the finding of genuine use. What is important is that the decision reflects that the relevant business data were considered and assessed in relation to the kind of goods and services at issue and the characteristics of the relevant market. Simply stating whether the relevant factors (time, place, nature and extent of use) have been fulfilled or not is not sufficient to support the final conclusion on the issue of genuine use. Finally, it must be clarified that, notwithstanding the confidentiality of an entire submission or annex, data contained therein that are clearly within the public domain (e.g. in the form of press extracts) can be referred to in the decision.

10.5 Examples

The following cases present some of the decisions of the Office and the Court (with different outcomes) where the overall assessment of the submitted evidence was important.

10.5.1 Genuine use accepted

10.5.2 Genuine use not accepted