Court settles clash between broadcaster and erotic video producer
The EU General Court has affirmed a European Union Intellectual Property Office (EUIPO) decision to revoke a broadcasting-related trademark, after an erotic video producer claimed the mark had not been used for five years.
The court delivered its decision on Friday, July 13.
In 2000, Star Television Productions applied to register a figurative mark that included the word ‘Star’ next to an image of a star. It was registered in 2009 in classes 9, 38 and 42, for software, broadcasting services, and database access services.
In 2015, erotic video producer Marc Dorcel asked the EUIPO to revoke the mark, arguing it had not been used in relation to these goods and services for five years continuously (April 2010 to April 2015).
The EUIPO’s Cancellation Division revoked the mark in 2016, and Star appealed.
In 2017, the Second Board of Appeal dismissed the appeal. The board found that Star worked in the field of content production rather than dissemination, and the ‘Star’ mark covers the latter.
Star failed to provide proof of any turnover or other budgetary information associated with the mark and services it covers, information which could have provided evidence of use in commerce, the board said.
Star argued that the board wrongly criticised it for not having produced figures to prove the use and importance of the trademark. It also claimed the board did not ascribe enough importance to a declaration Star produced which contained a witness’s description of how the ‘Star’ mark had been used.
Marc Dorcel asked the court to uphold the EUIPO’s decision. The erotic video producer also requested that the court order Star to pay Marc Dorcel’s costs incurred during the EUIPO proceedings, as the EUIPO had awarded the costs but Star failed to pay.
On appeal, the EU General Court said proof of use must be based on concrete and objective evidence, while the commercial activity related to the mark’s use must be taken into account.
The smaller the commercial use has been, the more the mark’s owner must prove it has been used seriously, the court said. It said the board had correctly found that Star had failed to provide any quantifiable information of this kind.
The court said the declaration Star referred to was not made by a third party, but by a person bound by an employment relationship with the company. It confirmed that the board was correct to look for other corroborating evidence, rather than accept it as concrete and objective.
The document may prove that Star manages economic activities throughout the EU but it does not establish that the mark was used during the five-year period in relation to the registered services, the court said.
The court added that although Star is responsible for certain content that is broadcasted, it is a third party which transmits the content to subscribers.
As noted by the board, the court said the content services Star used the mark for during the five-year period are covered by class 41, which the ‘Star’ mark is not registered in. It explained that use in this way does not establish the mark’s use for the goods and services it is registered to cover.
The court dismissed Star’s appeal and ordered it to pay the costs incurred by the EUIPO and Marc Dorcel.
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