Revocation for Non-Use of Baccarat’s EUTM: Proving Genuine Use is Paramount

Overview: A recent EUIPO decision revoking Baccarat’s EU Trade Mark (EUTM) designation for certain goods highlights the complexity of proving genuine use for luxury brands expanding into new product categories. Baccarat, primarily known for luxury crystal creations, faced revocation of its EUTM in categories like textiles and footwear. This case underscores the rigorous evidentiary requirements mandated by EU trade mark law, particularly Article 58(1)(a) EUTMR, which allows for revocation if a trademark hasn’t been genuinely used in the European Union for five years.

Key Facts: Baccarat’s EUTM, registered in 2007, covered various goods across textiles, footwear, and accessories. In August 2023, an application for revocation was filed by Lidia Bersani due to non-use. To counter this, Baccarat needed to demonstrate use between August 2018 and August 2023 by providing specific, comprehensive evidence showing the time, place, extent, and nature of the trademark’s use for these products.

Assessment of Evidence: The Cancellation Division scrutinized Baccarat’s evidence for scarves and footwear, but found it inadequate. Baccarat’s documents included minimal sales figures and sporadic invoices. For scarves, only a few sales were recorded, and website listings alone did not meet the threshold to demonstrate actual sales. For footwear, a limited collection of crystal-heel shoes was launched but without sufficient sales records, which did not meet the standard for genuine use in the EU market.

Decision and Implications: The revocation was granted, reflecting that trademarks not backed by comprehensive sales data and evidence of sustained market presence risk losing legal protection. For luxury brands, minimal sales may not fulfill genuine-use requirements, especially in competitive markets where even low sales volumes must show a real commercial purpose. This case highlights the need for meticulous documentation that aligns with EUIPO guidelines and relevant case law.

Key Takeaways for Trademark Holders:

1. Rigorous Evidence is Essential: Proof of use must address specific criteria, including extent and frequency, with reliable commercial documentation.
2. Luxury Sector Considerations: Low sales volumes might suffice, but only if they prove genuine commercial activity—not just preservation.
3. Comprehensive Documentation: Combining sales data with other forms of evidence could strengthen a case; selective evidence, as seen with Baccarat, may fall short.

Ultimately, this decision reinforces that successful trademark protection in the EU relies on a thorough, clear demonstration of genuine market activity, tailored to each category of goods.