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Dispute Resolution Department’s Case of the Week – Trade Marks: Use them or lose them!

Kaane American International Tobacco Company FZE v EUIPO - June 2017 The EU General Court has rejected an appeal from Kaane American International Tobacco Company FZE against the decision of the European IPO to revoke its trade mark for non use.  

An applicant for a UK or a European trade mark must intend to use the mark in question in respect of the goods or services for which it is to be registered within 5 years of registration.  If there is no intention to use the mark, the application for a UK trade mark may be refused for being in bad faith, and in respect of an EU trade mark, bad faith can be a ground for a declaration of invalidity.

Once registered, the trade mark must be put to genuine use within 5 years from the date of publication, and for a continuous 5 year period,  either by the trade mark owner or with his consent, unless there are proper reasons for non use.  If not, the trade mark owner is at risk of an application for revocation by a competitor or other third party.  The exception for “proper reasons for non-use” is narrowly interpreted, and is considered to relate to circumstances unconnected with the trade mark owner which prohibit the trade mark owner using the mark, rather than circumstances associated with commercial difficulties experienced by the trade mark owner.

In this case the tobacco company had a figurative mark for the words “Gold Mount” with an image of a mountain which was revoked by the EU IPO for non use.  In making the appeal, the tobacco company submitted evidence of its participation in international trade fairs which it argued amounted to genuine use.  However, although the words “Gold Mount” appeared on the trade stand, the image of the mountain didn’t.  Therefore, the registered mark, which included both the words and the image, had not been used at the trade fairs and in any event there was no evidence that the trade fairs were aimed at the EU market.

In the revocation proceedings, the tobacco company had argued that the fact that the carbon monoxide levels in emissions from its cigarettes exceeded EU maximums and were therefore unsaleable in the EU constituted “proper reasons for non use”.  The EU IPO rejected this argument, concluding that this was a commercial difficulty within the tobacco company’s control and did not amount to a “proper reason for non use”.  The EU General Court agreed with the EU IPO’s conclusion that this was not a proper reason for non use and the appeal was rejected.

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