by Jeremy Erwin , Ross Magee December-16-2020 in Intellectual Property

In our recent series of articles, we have examined a number of high profile EU trade marks which have been declared invalid either in whole or in part on the basis that the mark has not been used either at all, or in each of the registered classes. 

In this case, International Group Management Limited, brought a challenge to the validity of the well-known Premier League trade mark, held by Football Association Premier League Limited. The trade mark was challenged on the basis that it was not being genuinely used under each of the specific classes in which it was registered.

When the challenge came before the EUIPO, the Cancellation Division was not satisfied that the mark had been put to genuine use in each of the various classes in which it was registered. The Cancellation Division allowed the trade mark to stand for just two specific classes.

The Premier League appealed the decision to the Board of Appeal of the EUIPO, and that decision was issued on 11 November 2020. The Board noted that there is “genuine use” of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services, the nature of them, the characteristics of the mark and the scale and frequency of the use of the mark. The Board reiterated that genuine use must be demonstrated by solid and objective evidence of the effective and sufficient use of the mark.

Taking account of the evidence before it, the Board restored protection for some of the classes of the trade mark, but upheld the cancellation for those classes where, in its view, genuine use of the mark had not been demonstrated.

This decision of the Board is a further warning for the holders of registered trade marks to put the mark to genuine use in each class, and in particular, to be able to demonstrate that genuine use in the event of a challenge.

For further information on this article or for any other Intellectual Property related issues, please contact Jeremy Erwin or Ross Magee at Hayes solicitors.

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