Advertising saves the day in non-use case

The plaintiff filed a trademark application but this was rejected due to an earlier trademark, prompting the plaintiff to initiate a non-use action against the earlier mark. The earlier trademark covers various goods and services, including those in classes 37 and 43. The plaintiff claimed the trademark is used only for retail store services and that the unused services should be struck down.

The defendant sought dismissal of the non-use action. It claimed its trademark is used for retail store services as well as construction services (class 37) and services for providing food and beverages (class 43).

The First Instance Court cancelled the part of the trademark covering “construction services” and the “rental of construction equipment and machinery” in class 37 on the following grounds:

The trademark’s five-year grace period for non-use had ended;

The expert panel found sufficient evidence of use regarding services for providing food and beverages; and

The expert panel and court found insufficient evidence of use regarding services in class 37. The defendant’s commercial books and records include records regarding rental of construction equipment and machinery. However, these records were found to be insufficient to prove the trademark is used for the services in class 37.