Correct use of a trade mark
The European Union Intellectual Property Office (EUIPO) and the European Court (EC) assess the use of the trade mark “Gourmet” differently. The trade mark owner had to go through several instances to obtain confirmation that he had used his trade mark “correctly” and could enforce it against third parties.
Gourmet against Gourmet
The plaintiff is the owner of the Spanish word mark “GOURMET”. The defendant is the applicant of a European Union trade mark “Gourmet”, which is graphically designed. The defendant contested the use of the opposing trade mark in the opposition proceeding. Therefore, the plaintiff had to prove the use of the word mark to preserve rights.
Use of a word trade mark
If a trade mark is not used in the registered form it is examined whether the used form preserves the rights of the registered trade mark. The applicant has used its word mark in the following forms:
EUIPO has rejected the right-preserving use of the Spanish word mark “GOURMET” by these used forms.
This is rather surprising, as a word mark should allow the trade mark owner a certain freedom of use. A word mark does not have to be used 1 to 1 as it is registered, i.e. in TimesNewRoman font size 12 in black colour. It is recognised that a word mark may also be used with graphic elements.
Against this background, the plaintiff certainly assumed that they could easily prove the use of their word mark. In fact, the EC took the same view and affirmed the right-preserving use.
To the point
If a trade mark is not used in its registered attacks of the other party are possible and more efforts may be necessary to enforce your rights. Therefore assess the form of use of your trade marks and carefully evaluate the advantages and disadvantages of a changed form of use.
