Can your use of an EU trade mark on two small restaurants amount to genuine use if it is not widespread? Recent EU Board of Appeal decision says yes

The issue as to whether use of a trade mark in one EU Member State is sufficient enough to count as genuine use is a question that is frequently explored by courts in the EU. The issue arises when trade mark owners need to prove genuine use in order to substantiate its opposition or invalidity claim, or to defend against a non-use cancellation attack.

In the EU, the indications and evidence for submitting proof of use must consist of indications concerning the place, time, extent and nature of use of the contested trade mark for the goods and services for which it is registered.

Whilst it is accepted case law that territorial borders of the Member States within the EU should be disregarded in the assessment of whether an EU trade mark has been put to genuine use in the EU, the recent decision by the Board of Appeal in R 20/2024-4, TOROVERDE / TOROTAPAS et al has further pointed to how use of a trade mark on two restaurants in two small towns in Spain was sufficient to count as genuine use within the whole of the EU. This case further highlights that use does not need to be geographically widespread in order to satisfy the criteria of genuine use.

This recent decision saw the Board of Appeal reiterate the fact that cases need to be assessed on an individual basis and that an overall assessment of all the relevant factors must be carried out.

In terms of the place and extent of use, here, the opponent demonstrated the existence, during the relevant period, of two restaurants called ‘TORO TAPAS’ in the localities of El Puerto de Santa María and Ronda, belonging to the provinces of Cádiz and Malaga, respectively. However, the applicant claimed that the use of the earlier trade mark in only two restaurants situated in small localities, such as those mentioned, was not sufficient to substantiate genuine use of the trade mark within the EU.

According to case-law, use within the EU does not necessarily have to be geographically widespread in order to be considered genuine, since that depends on the characteristics of the goods or service in question.

Here, the Board of Appeal found that although the services provided were linked to the premises of El Puerto de Santa María and Ronda, from the documents submitted by the opponent, these localities are tourist areas and enable customers from a variety of geographical origin to be exposed to the earlier trade mark. Its population is therefore not representative of the number of potential customers that its catering establishments may have, particularly during the summer months. As the opponent pointed out and from the extracts from the Tripadvisor website that were submitted in evidence, together with those written in Spanish, a large proportion of the customer reviews were written in other European and international languages, confirming that a large proportion of their clients come from other parts of Spain and Europe.

The Board therefore agreed with the Opposition Division’s earlier conclusions that the commercial use of the earlier trade mark was real and aimed at creating and maintaining a market share.  Accordingly genuine use was made out.

Concluding thoughts

Case law has conveyed how the question of genuine use in the EU has to be considered on a case-by-case basis and that an overall assessment must be carried out, which takes into account all the relevant factors of the case.

Many may assume that genuine use requires extensive coverage across various regions or countries within the EU to prove genuine use of a trade mark. However, this case emphasises that genuine use can be established even with a more localised presence.

What was decisive here, was the impact that the use had on the internal market and, particularly, whether it was sufficient, as has been asserted, to maintain or create a market share for the goods and services covered by the trade mark; and not whether or not it will lead to commercial success. So for restaurant services, as the Board rightly pointed out, it would be unreasonable for an owner of an EU trade mark to open up a restaurant under its trade mark throughout the territory of a country or even in several countries of the EU for such use to amount to genuine use. As this case demonstrates, the requirement of genuine use is not intended to reserve the protection of EU trade marks solely for large-scale commercial uses of them.

For further information regarding this topic please contact Karen Lee or any member of our Intellectual Property team.

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