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3 March 2022TrademarksMuireann Bolger

EUIPO loses dispute over ‘genuine use’ at EU court

In a loss for The EU Intellectual Property Office, an EU general court has overturned a decision cancelling a word sign for ‘Mood Media’, first registered by a Dutch company more than a decade ago.

The sixth chamber of the EU General Court handed down the decision yesterday, Wednesday, March 2, holding that the EUIPO’s board had failed to consider evidence that proved the mark had been put to genuine use over a five-year period.

In May 2007, Mood Media, the predecessor in title to Mood Media Netherlands, filed an application for registration of an EU trademark for the word sign ‘Mood Media’ to cover music equipment.

The trademark application was published in Community Trade Marks Bulletin No 5/2008 of February 2008 and the mark was registered in July 2008.

A dead mark?

In June 2017, Italy-based Tailoradio Srl, filed an application for the revocation of that mark with EUIPO claiming that the contested mark had not, within a continuous period of five years, been put to genuine use in connection with any of the goods and services in respect of which it had been registered.

In March 2019, the cancellation division rejected the application for revocation, prompting the Italian company to file a notice of appeal with EUIPO against the decision.

In July 2020, the First Board of Appeal found that the Dutch company had not proved that it had made genuine use of the contested mark in connection with the goods and services concerned and annulled the cancellation division’s decision.

In particular, the board found that it was apparent from the evidence that the contested mark was used as a company name, as an essential part of a domain name or in a form that differed from that which had been registered in such a way that the distinctive character of the contested mark had been altered.

The board also determined that the other items of evidence were scarce and isolated and that it had not been proved that a link could be established between the contested mark and the goods and services concerned.

Slight modification

On appeal, Mood Media contended that the Board of Appeal erred in excluding evidence showing use of the contested mark in slightly modified forms. It also argued that the board had mistakenly found that the evidence of use of the contested mark mainly showed use as a trade name or a domain name.

It further held that its addition of a colon to the sign was merely a  minor modification to the sign, which did not alter the distinctive character of the contested mark, because the intellectual meaning and the visual perception remain very similar, if not identical, to those of the sign as registered.

The court this week found that the board should have found that the use of the sign was tantamount to use of the contested mark and that the evidence in which that sign was included had to be taken into account when assessing whether there had been genuine use of the contested mark.

Genuine use

The EUIPO countered that the press articles produced by Mood Media only referred to other trademarks, which showed that the expression ‘mood media’ is used only as a trade name.

But the court disagreed, finding that the reference to other trademarks in those press articles did not preclude the contested mark from being used as a trademark

“The board of appeal therefore erred in deciding to exclude that evidence from its analysis of the use of the contested mark,” said the court.

The court also agreed that the goods bearing the disputed mark had been marketed on the platform Google Play, from which users can download them. “Since the goods are available for purchase directly under the contested mark, a link is clearly established between the goods and services and that mark,” it said.

The court found, contrary to what EUIPO and the intervener claimed, the websites to which the mark used as a domain name refers fulfil a commercial and advertising function.

“Those websites present the goods and services concerned and the sign ‘Mood Media’ separated by a colon appears at the top left on each page of the websites. Furthermore, it is possible, on those websites, to contact ‘Mood Media’ in order to obtain more information and to buy the goods and services concerned. Those websites therefore fulfil a commercial and advertising function, because they present all the goods and services concerned and offer the possibility of obtaining them,” it noted.

The court concluded that the board incorrectly excluded a significant number of items of evidence that should have been taken into account to assess whether there had been genuine use of the contested mark. It proceeded to annul the July 2020 decision and ordered the EUIPO to pay costs.

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