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More success for the IP team in the General Court

By Emma Yates, Senior Associate and Intellectual Property Solicitor

The important question about what is ‘genuine use’ of a trade mark is an issue that many rights holders have wanted further clarity on for some time now.

Our Intellectual Property team recently secured their second success in two years in the General Court which is a constituent court of the Court of Justice of the European Union, and although we were delighted with the result, we were disappointed that the opportunity to deal with some specific, and pertinent, questions was missed.

As part of a long-running trade mark dispute in the EU (and the UK), our client has long been embroiled in various disputes with a competitor’s group of companies regarding their use of trade marks that are confusingly similar to our client’s.

The General Court upheld the decision of the EU Intellectual Property Office’s Board of Appeal to revoke a competitor’s trade mark for non-use.

Despite this ‘win’ for the team and our client, disappointingly, the General Court did not choose to consider some of the important points that our IP team had made in submissions in relation to whether sales in the downstream distribution channel and/or a third party’s use of a mark without the trade mark owner’s consent counts as ‘genuine use’ for these purposes.

In the context of the law regarding what is ‘genuine use’ of a trade mark, these are important questions that rights holders and those contesting the rights would have liked answers to.

It will therefore be interesting to see on which side judicial guidance will land when these issues, inevitably, fall to be determined again in future litigation.