[REVOCATION - PROTECTION OF A EUROPEAN UNION TRADEMARK]

[INTELLECTUAL PROPERTY - EUROPEAN UNION TRADEMARK - REVOCATION]

🚨 A trademark may be revoked on grounds of degeneration if, in the course of trade, the trademark has become a common designation of a product or service for which it is registered as a result of the activity or inactivity of its owner.

(General Court of the European Union, 7 February 2024, Sports et loisirs (Casal sport) c/ EUIPO, case T-220/23)

⚖️ In the above-mentioned case, Sports et Loisirs sought revocation of the European Union trademark ‘CITY STADE’ registered following an application filed by Tennis d'Aquitaine SAS. The applicant claimed that the trademark had become customary and generic: ‘the contested trademark has become the designation customary in the trade for the goods in respect of which it was registered and that, in particular, it has been used to designate in a generic manner buildings, structures or multi-sports grounds intended for the practice of basketball, football or other sports’.

Tennis d'Aquitaine SAS claims that, for several years, it has taken all the necessary steps to assert the use of CITY STADE. It claims that it has affixed the ‘R’ symbol to all its products, and in particular that it has sent letters of formal notice and actively pursued the defence of the trademark with several companies

In assessing whether the mark has become a customary designation for the goods or services it designates, the Court of First Instance based its analysis in particular on the following points:

1. Whether a trademark has become ‘customary’ or ‘usual’ is to be assessed in the light of the relevant public, which may include the institutional public, consisting largely of local or regional authorities, the general public and professionals involved in the marketing of the goods designated by the contested trademark.

In this case, ‘CITY STADE’ was used as a generic expression in the trade to designate a multi-sports pitch and not as a trademark. The trademark could not be considered capable of fulfilling its original function of identifying the goods or services it designates as originating from a particular undertaking.

2. A balance must be struck between the interests of the trademark owner and those of his competitors linked to the availability of the signs. The loss of distinctive character of an EU trademark can only be claimed against the owner if this loss is due to the owner's activity or inactivity. In this context, the notion of inactivity includes both the failure of the owner to apply in good time to the competent authority to prohibit third parties from using a trademark in respect of which there is a likelihood of confusion, and all omissions by the owner relating to the implementation of a sufficient level of vigilance to preserve the distinctiveness of his trademark.

⚠ Simply registering a trademark is not sufficient to protect the trademark and preserve the rights attached to it.

⚠ The ® symbol alone cannot automatically confer distinctive character.

✅Please ensure to put in place all the necessary measures, in various forms, and in a systematic manner, to preserve the distinctive character of a trademark.

#intellectual property #IP #trade mark #forfeiture