The ‘Standard’ of Use Evidence in the EU – Advertising and Promotion Can be Enough to Show Genuine Use of a Service Without That Service Actually Crossing the Pond

Does evidence showing booking, advertising and selling services in the EU constitute genuine use if the service actually registered takes place abroad?

This was the question contemplated by a recent decision of the General Court. The case T-768/20 (Standard International Management LLC v EUIPO) addresses the use of trade marks in the EU where the relevant brand operates hotel and leisure facilities outside the jurisdiction.

The Case
Standard International Management LLC (“SIM’) is a hotel operator and the owner of an EU logo mark ‘The Standard’ which was registered in 2011 (the “Mark”). Asia Standard Management Services Ltd (“ASMS”) submitted an application to revoke the mark on the basis that there was no genuine use in the EU, as the hotels operated by the brand were all based in the USA.

In 2020, the Cancellation Division of the EUIPO revoked the Mark, and the Board of Appeal upheld the revocation of stating that the evidence provided was insufficient to show genuine use of the Mark. SIM then appealed to the General Court of the EU.

The Decision
In a decision that will greatly interest all brand owners, especially those based outside the EU, the General Court stated that evidence of use of the mark should not be limited only to the services and provision of goods of the Mark, and annulled the non-use revocation decision.

Despite the fact that the Mark was not registered for “advertising,” “booking,” “travel agency” or “sale[s]” services, the General Court found that evidence of such use is relevant where advertisements and offers for sale include as their object the services and goods for which a mark is registered. This follows in line with EU product compliance guidance, which considers that by targeting EU customers from non-EU destinations the goods and services are made available in the EU and therefore must comply with EU law.

Interestingly, when arriving at its decision, the General Court made a distinction between the location of hotel services operation and the location of use of the Mark in advertising and promotion. When assessing whether the Mark is of genuine use in the EU, the Court stated that only the latter location is relevant. This is supported by the EUIPO examination guidelines which state:

where the goods or services are available abroad, such as holiday accommodation or particular products, advertising alone may be sufficient to amount to genuine use”.

The case was referred back to the EUIPO for examination.

The Effect
This decision is a useful reminder to brands that service EU customers that just because the services are hosted abroad does not mean they cannot maintain their EU marks to protect and, indeed, enforce their rights, provided that the advertising and promotion materials are targeted at EU consumers. It is also useful to highlight of how useful EU trade marks can be and their value to brand owners outside the EU.

By Aurelija Grubytė, Georgina Rigg and Simon Casinader

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