The General Court of the EU confirms that advertisements and offers for sale constitute acts of use of a EU trade mark

In July, the General Court ruled in Case T-768/20 (Standard International Management LLC v EUIPO) on the importance of distinguishing between the place where hotel and ancillary services are offered and the specific place of use of the mark when assessing genuine use of EU trade marks. According to the Court, the advertising and promotional activities for the marks relating to hotel and ancillary services constitute acts of use of an EU trade mark.

For the most part, when looking for a hotel room, Merpel does not look for "standard" services.  However, for some hoteliers, the term "Standard" is the core of their intellectual property. This is the case with Standard International Management LLC (in the following "Standard Hotels"), an American group with seven boutique hotels in New York City (Meatpacking District and East Village), Miami Beach, London, the Maldives, Ibiza and Hua Hin in Thailand, and the Hong Kong-based Asia Standard Management Services Ltd (in the following "Asia Standard"), whose main premium assets are located in the Hong Kong CBDs. Both companies own and use STANDARD-formative trade marks, registered for hotel and ancillary services, among others.

Background

In 2009, Standard Hotels applied for registration of the following EU trade mark (yes, it is represented upside down), inter alia, for hotel and ancillary services in class 43. The EU trade mark was registered in 2011.

In 2018, Asia Standard filed an application for revocation of the above EU trade mark on the basis of Article 58(1)(a) EUTMR, claiming that the mark had not been put to genuine use. Two years later, the Cancellation Division of the EUIPO revoked the trade mark in its entirety with retroactive effect from the date of filing of the revocation application. Standard Hotels decided to appeal to the Boards of Appeal.

In its decision, the Fifth Board of Appeal upheld the decision of the first instance and dismissed the appeal. In particular, with regard to the place of use of the mark, the Board held that there was ample evidence to suggest that Standard Hotels' services were provided in the United States, despite the fact that various documents referred to advertisements and promotional campaigns aimed at customers in the EU. However, the Board concluded that the relevant evidence was insufficient because the place of provision of the hotel and ancillary services was outside the relevant territory of the European Union, notwithstanding the fact that the applicant had targeted consumers in the European Union with advertisements and sales offers for these services.

Standard Hotels decided to bring an action for annulment of the decision of the Board of Appeal before the General Court of the EU, relying on a single plea in law, alleging infringement by the Board of Appeal of the assessment of the genuine use of the contested mark under Article 58(1)(a) of Regulation 2017/1001, read in conjunction with Article 18 of that regulation. The General Court annulled the decision of the Fifth Board of Appeal. 

The Judgment

According to the General Court, the Board of Appeal was wrong to find that Standard Hotels' trade mark could not be put to genuine use directly in the EU because the applicant's services were provided in the United States, since the applicant was in any event able to produce several advertisements and sales offers for its hotel services which were aimed at customers in the EU. The Court stated that the acts of advertising and marketing provided by Standard Hotels are part of the acts of use of a trade mark within the meaning of the EU Trade Mark Regulation. These acts are therefore relevant for the purpose of establishing genuine use of the mark, as they took place in the EU. Therefore, the fact that the services in question are provided in the US does not necessarily mean that the acts of use of the Standard Hotels mark to advertise and offer for sale those services take place outside the EU. Even if the applicant offers goods or services outside the EU, it is conceivable that it uses the mark to create or maintain an outlet for those goods and services in the EU. Therefore, according to the Court, a distinction must be made between the place where those services are provided and the place where the trade mark is used, as only the latter is relevant for the assessment of genuine use. This led the Court to annul the decision of the Board of Appeal.

Comment

The judgment noted the importance of taking into account advertising and offers for sale which constitute acts of use in the assessment of the genuine use of an EU trade mark, in particular with regard to the place of use of those marks relating to goods or services as holiday accommodation and ancillary services. While the Court held that the place of use of an EU trade mark must always be assessed in relation to the use of the mark in the relevant territory "within the Union", the provision of hotel and complementary services outside the EU does not automatically mean that the place of use of the mark must be assessed in those "third countries". Therefore, for those marks covering hotel and ancillary services, the acts of use of a trade mark (including advertising and marketing as well as offers for sale) should therefore always be distinguished from the mere place of supply of the services in question, as only the former are relevant for the assessment of genuine use.