Revocation actions: Beware of Non-Use [Case Reference R0307/2024-1]

Introduction

GILMAR S.P.A., a well-known Italian fashion brand regarded for its brand ‘ICEBERG’, registered the EUTM trade mark no 10941615 for ICE in June 2017.

In December 2023, Drifa ehf, filed an application for revocation for non-use based on Article 58(1)(a) EUTMR (when there has been a continuous period of 5 years after the EUTM has been registered and not been put to genuine use). This case was referred to the Board of Appeal following a dismissal from the Cancellation Division.

Board of Appeal (“BOA”)

The BOA referred to the legislative framework (Article 10(3) and (4) of the EUTMDR), namely that genuine use must be a reference to evidence which includes the following:

· Packages

· Labels

· Price lists

· Catalogues

· Invoices

· Photographs

· Newspaper

· Advertisements

The BOA gave useful guidance on presenting evidence, namely – that it clearly links each allegation with the relevant piece of evidence.

Despite Gilmar producing over 2,000 pages of evidence, the BOA found difficulty in linking the invoices produced to the products as the date and product code were missing.

Therefore, the BOA narrowed down the evidence to only 15 instances of the sign ICE in question. A substantial amount of the evidence was found to not display ICE as the dominant element of the sign.

Given the issues on evidence, it came as no surprise that the BOA was unable to find that the evidence established genuine use of the ‘ICE’ trade mark, upholding Drifa ehf.’s application for revocation.

Briffa Comment

The BOA has made clear that if you are facing a revocation action, the evidence you provide is crucial and must show a clear link with the allegations. The focus should be on quality of evidence and not to provide rafts of evidence, i.e. 2,000 pages of evidence which fail to provide an existence of a link to genuine use.

This decision underscores the importance of establishing and maintaining a clear use of your trade mark to ensure it is adequately protected against a revocation action for non-use.