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Genuine use of a mark does not require aiming at end consumers

by Laurine Janin-Reynaud (DUCLOS THORNE MOLLET-VIEVILLE & ASSOCIES – France)

General Court of the European Union,  July 7, 2016, Fruit of the Loom, Inc. v. EUIPO / Takko Holding GmbH (FRUIT) - T-431/15, ECLI:EU:T:2016:395 (http://curia.europa.eu/juris/document/document_print.jsf?doclang=EN&text=&pageIndex=0&part=1&mode=lst&docid=183701&occ=first&dir=&cid=668288)

In a judgment of July 7, 2016, the General Court of the European Union held that commercial acts exclusively aimed at professionals can qualify as genuine use of a trade mark provided they are consistent with the essential function of the mark, even if the goods are ultimately never offered for sale to end consumers.

The Court invalidated a decision of the EUIPO’s Second Board of Appeal which considered that genuine use of the trade mark FRUIT in connection with clothing, footwear and headgear could not be established by commercial acts aimed exclusively at professionals from the sector concerned, with stronger reason since the actual launch of the goods at issue was stopped and since such goods were consequently never offered for sale to end consumers.

  1. In the case at hand, the evidence submitted by the applicant to establish genuine use of its trademark mainly consisted in sample products shown at major fashion trade shows, as well as in the distribution of sample sets to retail customers in at least 12 Member States, and of brochures in the European Union.
  2. The Second Board of Appeal concluded that the mark FRUIT had not been used in a manner that was sufficiently public or outward, that the intensity and length of use of the mark in the (relatively limited) business circles were quite low, and that the evidence did not prove that the applicant had seriously tried to acquire a commercial position on the market for the mark FRUIT.

To refuse the qualification of genuine use, the Board of Appeal referred to the lack of evidence submitted, and thus to the failure of compliance with the requirement of use in accordance with the essential function of the trademark, for the purpose of maintaining or creating market share. Indeed, it explained that use of the trademark on products which have only been seen by resellers, sales agents, etc. and the staff of the proprietor of the mark, does not guarantee the identity of the origin of goods or services to the consumer or end user, nor does it create or preserve an outlet for those goods.

As a consequence, the Board of Appeal clearly indicated that commercial acts aimed exclusively at professionals from the sector concerned (and not to end consumers) are insufficient for that purpose.

  1. However, the General Court did not follow the Board of Appeal’s reasoning. After reminding that genuine use of a mark duly requires that it be used publicly and outwardly, it specified that the outward use of a mark does not necessarily mean use aimed at end consumers.

The Court referred to the aim of creating and preserving an outlet for the goods on the market concerned where, in the present case, it is customary to direct commercial acts at professionals. Under such circumstances, it concluded that such uses can be considered as consistent with the essential function of the mark and qualify as genuine use of the trademark.

It must also be held that the subsequent decision of the applicant to stop the launch of the goods did not affect the Court’s position which stated that “where the marketing activities invoked to establish genuine use of a mark are capable, at the time they are undertaken by the proprietor of that mark, of creating an outlet for the goods or services concerned, subsequent circumstances may not, in principle, be taken into account when assessing whether there has been genuine use of that mark.

As a result, the main criterion to meet the condition of outward use seems to lie in the creation of an outlet for the goods bearing the mark, rather than in reaching its intended audience, which, under certain circumstances, could be composed of professionals rather than end consumers.