Cert IP: 2020-2021

Trade Marks: Invalidity and Revocation

Relevant Legislation
Directive (EU) 2015/2436 of the European Parliament and of the Council of 16
December 2015 to approximate the laws of the Member States relating to trade marks:

Article 4
Absolute grounds for refusal or invalidity
1.   The following shall not be registered or, if registered, shall be liable to be declared
invalid:
(a) signs which cannot constitute a trade mark;
(b) trade marks which are devoid of any distinctive character;
(c)trade marks which consist exclusively of signs or indications which may serve, in trade, to
designate the kind, quality, quantity, intended purpose, value, geographical origin, or the
time of production of the goods or of rendering of the service, or other characteristics of
the goods or services;
(d trade marks which consist exclusively of signs or indications which have become
) customary in the current language or in the bona fide and established practices of the
trade;
(e)signs which consist exclusively of:
(i the shape, or another characteristic, which results from the nature of the goods
) themselves;
(ii)the shape, or another characteristic, of goods which is necessary to obtain a technical
result;
(iii) the shape, or another characteristic, which gives substantial value to the goods;
(f)trade marks which are contrary to public policy or to accepted principles of morality;
(g trade marks which are of such a nature as to deceive the public, for instance, as to the
) nature, quality or geographical origin of the goods or service;
(h trade marks which have not been authorised by the competent authorities and are to be
) refused or invalidated pursuant to Article 6ter of the Paris Convention;
(i trade marks which are excluded from registration pursuant to Union legislation or the
) national law of the Member State concerned, or to international agreements to which the
Union or the Member State concerned is party, providing for protection of designations of
origin and geographical indications;
(j trade marks which are excluded from registration pursuant to Union legislation or
) international agreements to which the Union is party, providing for protection of traditional
terms for wine;
(k trade marks which are excluded from registration pursuant to Union legislation or
) international agreements to which the Union is party, providing for protection of
traditional specialities guaranteed;
(l trade marks which consist of, or reproduce in their essential elements, an earlier plant
) variety denomination registered in accordance with Union legislation or the national law of
the Member State concerned, or international agreements to which the Union or the
Member State concerned is party, providing protection for plant variety rights, and which
are in respect of plant varieties of the same or closely related species.
2.   A trade mark shall be liable to be declared invalid where the application for registration
of the trade mark was made in bad faith by the applicant. Any Member State may also
provide that such a trade mark is not to be registered.
3.   Any Member State may provide that a trade mark is not to be registered or, if registered,
is liable to be declared invalid where and to the extent that:
(a)the use of that trade mark may be prohibited pursuant to provisions of law other than trade
mark law of the Member State concerned or of the Union;
(b)the trade mark includes a sign of high symbolic value, in particular a religious symbol;
(c)the trade mark includes badges, emblems and escutcheons other than those covered by
Article 6ter of the Paris Convention and which are of public interest, unless the consent of
the competent authority to their registration has been given in conformity with the law of
the Member State.
4.   A trade mark shall not be refused registration in accordance with paragraph 1(b), (c) or
(d) if, before the date of application for registration, following the use which has been made
of it, it has acquired a distinctive character. A trade mark shall not be declared invalid for the
same reasons if, before the date of application for a declaration of invalidity, following the
use which has been made of it, it has acquired a distinctive character.
5.   Any Member State may provide that paragraph 4 is also to apply where the distinctive
character was acquired after the date of application for registration but before the date of
registration.

Article 5
Relative grounds for refusal or invalidity
1.   A trade mark shall not be registered or, if registered, shall be liable to be declared invalid
where:
(a)it is identical with an earlier trade mark, and the goods or services for which the trade mark
is applied for or is registered are identical with the goods or services for which the earlier
trade mark is protected;
(b because of its identity with, or similarity to, the earlier trade mark and the identity or
) similarity of the goods or services covered by the trade marks, there exists a likelihood of
confusion on the part of the public; the likelihood of confusion includes the likelihood of
association with the earlier trade mark.
2.   ‘Earlier trade marks’ within the meaning of paragraph 1 means:
(a)trade marks of the following kinds with a date of application for registration which is
earlier than the date of application for registration of the trade mark, taking account, where
appropriate, of the priorities claimed in respect of those trade marks:
(i) EU trade marks;
(ii)trade marks registered in the Member State concerned or, in the case of Belgium,
Luxembourg or the Netherlands, at the Benelux Office for Intellectual Property;
(iii trade marks registered under international arrangements which have effect in the
) Member State concerned;
(b EU trade marks which validly claim seniority, in accordance with Regulation (EC) No
) 207/2009, of a trade mark referred to in points (a)(ii) and (iii), even when the latter trade
mark has been surrendered or allowed to lapse;
(c)applications for the trade marks referred to in points (a) and (b), subject to their
registration;
(d trade marks which, on the date of application for registration of the trade mark, or, where
) appropriate, of the priority claimed in respect of the application for registration of the trade
mark, are well known in the Member State concerned, in the sense in which the words
‘well-known’ are used in Article 6bis of the Paris Convention.
3.   Furthermore, a trade mark shall not be registered or, if registered, shall be liable to be
declared invalid where:
(a)it is identical with, or similar to, an earlier trade mark irrespective of whether the goods or
services for which it is applied or registered are identical with, similar to or not similar to
those for which the earlier trade mark is registered, where the earlier trade mark has a
reputation in the Member State in respect of which registration is applied for or in which
the trade mark is registered or, in the case of an EU trade mark, has a reputation in the
Union and the use of the later trade mark without due cause would take unfair advantage
of, or be detrimental to, the distinctive character or the repute of the earlier trade mark;
(b an agent or representative of the proprietor of the trade mark applies for registration
) thereof in his own name without the proprietor's authorisation, unless the agent or
representative justifies his action;
(c)and to the extent that, pursuant to Union legislation or the law of the Member State
concerned providing for protection of designations of origin and geographical indications:
(i an application for a designation of origin or a geographical indication had already been
) submitted in accordance with Union legislation or the law of the Member State
concerned prior to the date of application for registration of the trade mark or the date of
the priority claimed for the application, subject to its subsequent registration;
(ii)that designation of origin or geographical indication confers on the person authorised
under the relevant law to exercise the rights arising therefrom the right to prohibit the
use of a subsequent trade mark.
4.   Any Member State may provide that a trade mark is not to be registered or, if registered,
is liable to be declared invalid where, and to the extent that:
(a)rights to a non-registered trade mark or to another sign used in the course of trade were
acquired prior to the date of application for registration of the subsequent trade mark, or
the date of the priority claimed for the application for registration of the subsequent trade
mark, and that non-registered trade mark or other sign confers on its proprietor the right to
prohibit the use of a subsequent trade mark;
(b the use of the trade mark may be prohibited by virtue of an earlier right, other than the
) rights referred to in paragraph 2 and point (a) of this paragraph, and in particular:
(i) a right to a name;
(ii) a right of personal portrayal;
(iii) a copyright;
(iv) an industrial property right;
(c)the trade mark is liable to be confused with an earlier trade mark protected abroad,
provided that, at the date of the application, the applicant was acting in bad faith.
5.   The Member States shall ensure that in appropriate circumstances there is no obligation to
refuse registration or to declare a trade mark invalid where the proprietor of the earlier trade
mark or other earlier right consents to the registration of the later trade mark.
6.   Any Member State may provide that, by way of derogation from paragraphs 1 to 5, the
grounds for refusal of registration or invalidity in force in that Member State prior to the date
of the entry into force of the provisions necessary to comply with Directive 89/104/EEC are
to apply to trade marks for which an application has been made prior to that date.

Article 19
Absence of genuine use as ground for revocation
1.   A trade mark shall be liable to revocation if, within a continuous five-year period, it has
not been put to genuine use in the Member State in connection with the goods or services in
respect of which it is registered, and there are no proper reasons for non-use.
2.   No person may claim that the proprietor's rights in a trade mark should be revoked where,
during the interval between expiry of the five-year period and filing of the application for
revocation, genuine use of the trade mark has been started or resumed.
3.   The commencement or resumption of use within the three-month period preceding the
filing of the application for revocation which began at the earliest on expiry of the continuous
five-year period of non-use shall be disregarded where preparations for the commencement or
resumption occur only after the proprietor becomes aware that the application for revocation
may be filed.

Article 20
Trade mark having become generic or misleading indication as grounds for revocation
A trade mark shall be liable to revocation if, after the date on which it was registered:
(a)as a result of acts or inactivity of the proprietor, it has become the common name in the
trade for a product or service in respect of which it is registered;
(b as a result of the use made of it by the proprietor of the trade mark or with the proprietor's
) consent in respect of the goods or services for which it is registered, it is liable to mislead
the public, particularly as to the nature, quality or geographical origin of those goods or
services.

Article 21
Revocation relating to only some of the goods or services
Where grounds for revocation of a trade mark exist in respect of only some of the goods or
services for which that trade mark has been registered, revocation shall cover those goods or
services only.

United Kingdom Trade Marks Act 1994

46. Revocation of registration.
(1)The registration of a trade mark may be revoked on any of the following grounds—
(a)that within the period of five years following the date of completion of the
registration procedure it has not been put to genuine use in the United Kingdom, by
the proprietor or with his consent, in relation to the goods or services for which it is
registered, and there are no proper reasons for non-use;
(b)that such use has been suspended for an uninterrupted period of five years, and
there are no proper reasons for non-use;
(c)that, in consequence of acts or inactivity of the proprietor, it has become the
common name in the trade for a product or service for which it is registered;
(d)that in consequence of the use made of it by the proprietor or with his consent in
relation to the goods or services for which it is registered, it is liable to mislead the
public, particularly as to the nature, quality or geographical origin of those goods or
services.
(2)For the purposes of subsection (1) use of a trade mark includes use in a form [(the “variant
form”)] differing in elements which do not alter the distinctive character of the mark in the
form in which it was registered [(regardless of whether or not the trade mark in the variant
form is also registered in the name of the proprietor)], and use in the United Kingdom
includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom
solely for export purposes.
(3)The registration of a trade mark shall not be revoked on the ground mentioned in
subsection (1)(a) or (b) if such use as is referred to in that paragraph is commenced or
resumed after the expiry of the five year period and before the application for revocation is
made:
Provided that, any such commencement or resumption of use after the expiry of the five year
period but within the period of three months before the making of the application shall be
disregarded unless preparations for the commencement or resumption began before the
proprietor became aware that the application might be made.
(4)An application for revocation may be made by any person, and may be made either to the
registrar or to the court, except that—
(a)if proceedings concerning the trade mark in question are pending in the court, the
application must be made to the court; and
(b)if in any other case the application is made to the registrar, he may at any stage of
the proceedings refer the application to the court.
(5)Where grounds for revocation exist in respect of only some of the goods or services for
which the trade mark is registered, revocation shall relate to those goods or services only.
(6)Where the registration of a trade mark is revoked to any extent, the rights of the proprietor
shall be deemed to have ceased to that extent as from—
(a)the date of the application for revocation, or
(b)if the registrar or court is satisfied that the grounds for revocation existed at an earlier date,
that date.

47. Grounds for invalidity of registration.

(1)The registration of a trade mark may be declared invalid on the ground that the trade mark
was registered in breach of section 3 or any of the provisions referred to in that section
(absolute grounds for refusal of registration).
Where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section,
it shall not be declared invalid if, in consequence of the use which has been made of it, it has
after registration acquired a distinctive character in relation to the goods or services for which
it is registered.
(2)[Subject to subsections (2A) and (2G),] the registration of a trade mark may be declared
invalid on the ground—
(a)that there is an earlier trade mark in relation to which the conditions set out in
section 5(1), (2) or (3) obtain, or
(b)that there is an earlier right in relation to which the condition set out in section 5(4)
is satisfied,
unless the proprietor of that earlier trade mark or other earlier right has consented to
the registration.
[(2ZA)The registration of a trade mark may be declared invalid on the ground that the trade
mark was registered in breach of section 5(6).]
[(2A)... The registration of a trade mark may not be declared invalid on the ground that there
is an earlier trade mark unless—
(a)the registration procedure for the earlier trade mark was completed within the
period of five years ending with the date of the application for the declaration,
(b)the registration procedure for the earlier trade mark was not completed before that
date, or
(c)the use conditions are met.
( 2B )The use conditions are met if—
[(a)the earlier trade mark has been put to genuine use in the United Kingdom by the
proprietor or with their consent in relation to the goods or services for which it is
registered—
(i)within the period of 5 years ending with the date of application for the
declaration, and
(ii)within the period of 5 years ending with the date of filing of the application
for registration of the later trade mark or (where applicable) the date of the
priority claimed in respect of that application where, at that date, the five year
period within which the earlier trade mark should have been put to genuine
use as provided in section 46(1)(a) has expired, or]
 (b)it has not been so used, but there are proper reasons for non-use.
(2C)For these purposes—
(a)use of a trade mark includes use in a form [(the “variant form”)] differing in
elements which do not alter the distinctive character of the mark in the form in which
it was registered [(regardless of whether or not the trade mark in the variant form is
also registered in the name of the proprietor)], and
(b)use in the United Kingdom includes affixing the trade mark to goods or to the
packaging of goods in the United Kingdom solely for export purposes.
(2D)In relation to a [European Union] trade mark [or international trade mark (EC)], any
reference in subsection (2B) or (2C) to the United Kingdom shall be construed as a reference
to [the European Union].
[(2DA)In relation to an international trade mark (EC), the reference in subsection (2A)(a) to
the completion of the registration procedure is to be construed as a reference to the
publication by the European Union Intellectual Property Office of the matters referred to in
Article 190(2) of the European Union Trade Mark Regulation.]
(2E)Where an earlier trade mark satisfies the use conditions in respect of some only of the
goods or services for which it is registered, it shall be treated for the purposes of this section
as if it were registered only in respect of those goods or services.]
[(2F)Subsection (2A) does not apply where the earlier trade mark is a trade mark within
section 6(1)(c).]
[(2G)An application for a declaration of invalidity on the basis of an earlier trade mark must
be refused if it would have been refused, for any of the reasons set out in subsection (2H),
had the application for the declaration been made on the date of filing of the application for
registration of the later trade mark or (where applicable) the date of the priority claimed in
respect of that application.
(2H)The reasons referred to in subsection (2G) are—
(a)that on the date in question the earlier trade mark was liable to be declared invalid
by virtue of section 3(1)(b), (c) or (d), (and had not yet acquired a distinctive
character as mentioned in the words after paragraph (d) in section 3(1));
(b)that the application for a declaration of invalidity is based on section 5(2) and the
earlier trade mark had not yet become sufficiently distinctive to support a finding of
likelihood of confusion within the meaning of section 5(2);
(c)that the application for a declaration of invalidity is based on section 5(3)(a) and
the earlier trade mark had not yet acquired a reputation within the meaning of section
5(3).]
(3)An application for a declaration of invalidity may be made by any person, and may be
made either to the registrar or to the court, except that—
(a)if proceedings concerning the trade mark in question are pending in the court, the
application must be made to the court; and
(b)if in any other case the application is made to the registrar, he may at any stage of
the proceedings refer the application to the court.
(4)In the case of bad faith in the registration of a trade mark, the registrar himself may apply
to the court for a declaration of the invalidity of the registration.
(5)Where the grounds of invalidity exist in respect of only some of the goods or services for
which the trade mark is registered, the trade mark shall be declared invalid as regards those
goods or services only.
[(5A)An application for a declaration of invalidity may be filed on the basis of one or more
earlier trade marks or other earlier rights provided they all belong to the same proprietor.]
(6)Where the registration of a trade mark is declared invalid to any extent, the registration
shall to that extent be deemed never to have been made:
Provided that this shall not affect transactions past and closed.
Case Law
Ansul BV v. Ajax Brandbeveiliging BV Case C-40/01
34. As the provisions of the Paris Convention thus contain no guidance for defining the
concept of 'genuine use', the scope of that expression must be determined solely on the basis
of an analysis of the provisions of the Directive itself.
35. Next, as Ansul argued, the eighth recital in the preamble to the Directive states that trade
marks 'must actually be used or, if not used, be subject to revocation'. 'Genuine use' therefore
means actual use of the mark. That approach is confirmed, inter alia, by the Dutch version of
the Directive, which uses in the eighth recital the words 'werkelijk wordt gebruikt', and by
other language versions such as the Spanish ('uso efectivo'), Italian ('uso effettivo') and
English ('genuine use').
36. 'Genuine use' must therefore be understood to denote use that is not merely token, serving
solely to preserve the rights conferred by the mark. Such use must be consistent with the
essential function of a trade mark, which is to guarantee the identity of the origin of goods or
services to the consumer or end user by enabling him, without any possibility of confusion, to
distinguish the product or service from others which have another origin.
37. It follows that 'genuine use' of the mark entails use of the mark on the market for the
goods or services protected by that mark and not just internal use by the undertaking
concerned. The protection the mark confers and the consequences of registering it in terms of
enforceability vis-à-vis third parties cannot continue to operate if the mark loses its
commercial raison d'être, which is to create or preserve an outlet for the goods or services
that bear the sign of which it is composed, as distinct from the goods or services of other
undertakings. Use of the mark must therefore relate to goods or services already marketed or
about to be marketed and for which preparations by the undertaking to secure customers are
under way, particularly in the form of advertising campaigns. Such use may be either by the
trade mark proprietor or, as envisaged in Article 10(3) of the Directive, by a third party with
authority to use the mark.
38. Finally, when assessing whether there has been genuine use of the trade mark, regard
must be had to all the facts and circumstances relevant to establishing whether the
commercial exploitation of the mark is real, in particular whether such use is viewed as
warranted in the economic sector concerned to maintain or create a share in the market for the
goods or services protected by the mark.

Specsavers v Asda Case C-252/12

23. That distinctive character of a registered trade mark may be the result both of the use, as
part of a registered trade mark, of a component thereof and of the use of a separate mark in
conjunction with a registered trade mark. In both cases, it is sufficient that, in consequence of
such use, the relevant class of persons actually perceive the product or service at issue as
originating from a given undertaking (see, by analogy, Case C-353/03 Nestlé [2005] ECR
I-6135, paragraph 30).
24. It follows that the use of the wordless logo mark with the superimposed word sign
‘Specsavers’, even if, ultimately, it amounts to a use as a part of a registered trade mark or in
conjunction with it, may be considered to be a genuine use of the wordless logo mark as such
to the extent that that mark as it was registered, namely without a part of it being hidden by
the superimposed word sign ‘Specsavers’, always refers in that form to the goods of the
Specsavers group covered by the registration, which is to be determined by the referring
court.
25. That conclusion is not affected by the fact that the word sign ‘Specsavers’ and the
combination of the wordless logo with the superimposed word sign ‘Specsavers’ are also
registered as Community trade marks.
29. That interpretation is, in particular, supported by the objective pursued by the second
subparagraph of Article 15(1)(a) of Regulation No 207/2009 which, by avoiding imposing a
requirement for strict conformity between the form used in trade and the form in which the
trade mark was registered, is to allow the proprietor of the mark, in the commercial
exploitation of the sign, to make variations in the sign, which, without altering its distinctive
character, enable it to be better adapted to the marketing and promotion requirements of the
goods or services concerned. That objective would be jeopardised if, in order to establish use
of the registered trade mark, an additional condition had to be met, whereby the different
form in which that mark is used should not itself have been registered as a trade mark (see, by
analogy, Rintisch, paragraphs 21 and 22).
31. In view of all the foregoing considerations, the answer to the first three questions is that
Article 15(1) and Article 51(1)(a) of Regulation No 207/2009 must be interpreted as meaning
that the condition of ‘genuine use’, within the meaning of those provisions, may be fulfilled
where a Community figurative mark is used only in conjunction with a Community word
mark which is superimposed over it, and the combination of those two marks is, furthermore,
itself registered as a Community trade mark, to the extent that the differences between the
form in which that trade mark is used and that in which it was registered do not change the
distinctive character of that trade mark as registered.

Anheuser Busch Inc v Budvar Case C-245/02

83. In assessing whether the condition of honest practice is satisfied, account must be taken
first of the extent to which the use of the third party's trade name is understood by the
relevant public, or at least a significant section of that public, as indicating a link between the
third party's goods and the trade-mark proprietor or a person authorised to use the trade mark,
and secondly of the extent to which the third party ought to have been aware of that. Another
factor to be taken into account when making the assessment is whether the trade mark
concerned enjoys a certain reputation in the Member State in which it is registered and its
protection is sought, from which the third party might profit in selling his goods.
84. It is for the national court to carry out an overall assessment of all the relevant
circumstances, which include the labelling of the bottle in order to assess, more specifically,
whether the producer of the drink bearing the trade name can be regarded as unfairly
competing with the proprietor of the trade mark (see, to that effect, Gerolsteiner Brunnen,
paragraphs 25 and 26).
85. Accordingly, the second question must be answered as follows: — a trade name may
constitute a sign within the meaning of the first sentence of Article 16(1) of the TRIPs
Agreement. That provision is intended to confer on the proprietor of a trade mark the
exclusive right to prevent a third party from using such a sign if the use in question prejudices
or is liable to prejudice the functions of the trade mark, in particular its essential function of
guaranteeing to consumers the origin of the goods; — the exceptions provided for in Article
17 of the TRIPs Agreement are intended, inter alia, to enable a third party to use a sign which
is identical or similar to a trade mark to indicate his trade name, provided that such use.

Laboratories Goemar SA v La Mer Technology Case C-251/02

26. Finally, it can clearly be inferred from paragraph 36 of Ansul that, where use of the mark
does not have as its essential aim the preservation or creation of market share for the goods or
services which it protects, such use must be considered in fact to be intended to defeat any
request for revocation. Such use cannot be characterised as 'genuine' within the meaning of
the Directive.
27. In the light of the foregoing, the answer to the first, second, third, fourth and sixth
questions must be that Articles 10(1) and 12(1) of the Directive must be interpreted as
meaning that there is 'genuine use' of a trade 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 for
which it is registered, in order to create or preserve an outlet for those goods or services;
genuine use does not include token use for the sole purpose of preserving the rights conferred
by that mark. When assessing whether use of the trade mark is genuine, regard must be had to
all the facts and circumstances relevant to establishing whether the commercial use of the
mark is real in the course of trade, particularly whether such use is viewed as warranted in the
economic sector concerned to maintain or create a share in the market for the goods or
services protected by the mark, the nature of those goods or services, the characteristics of the
market and the scale and frequency of use of the mark. When it serves a real commercial
purpose, in the circumstances cited above, even minimal use of the mark or use by only a
single importer in the Member State concerned can be sufficient to establish genuine use
within the meaning of the Directive.

London Taxi Corp v Frazer-Nash Research Ltd [2016] EWHC 52

219. I would now summarise the principles for the assessment of whether there has been
genuine use of a trade mark established by the case law of the Court of Justice, which also
includes Case C-442/07 Verein Radetsky-Order v Bundervsvereinigung Kamaradschaft
'Feldmarschall Radetsky' [2008] ECR I-9223 and Case C-609/11 Centrotherm Systemtechnik
GmbH v Centrotherm Clean Solutions GmbH & Co KG [EU:C:2013:592], [2014] ETMR 7,
as follows:
(1) Genuine use means actual use of the trade mark by the proprietor or by a third
party with authority to use the mark: Ansul at [35] and [37].
(2) The use must be more than merely token, that is to say, serving solely to preserve
the rights conferred by the registration of the mark: Ansul at [36]; Sunrider at
[70]; Verein at [13]; Centrotherm at [71]; Leno at [29].
(3) The use must be consistent with the essential function of a trade mark, which is to
guarantee the identity of the origin of the goods or services to the consumer or end
user by enabling him to distinguish the goods or services from others which have
another origin: Ansul  at [36]; Sunrider at [70]; Verein at [13]; Silberquelle at
[17]; Centrotherm at [71]; Leno at [29].
(4) Use of the mark must relate to goods or services which are already marketed or
which are about to be marketed and for which preparations to secure customers are
under way, particularly in the form of advertising campaigns: Ansul at [37]. Internal
use by the proprietor does not suffice: Ansul at [37]; Verein at [14]. Nor does the
distribution of promotional items as a reward for the purchase of other goods and to
encourage the sale of the latter: Silberquelle at [20]-[21]. But use by a non-profit
making association can constitute genuine use: Verein at [16]-[23].
(5) The use must be by way of real commercial exploitation of the mark on the market
for the relevant goods or services, that is to say, use in accordance with the
commercial raison d'être of the mark, which is to create or preserve an outlet for the
goods or services that bear the mark: Ansul at [37]-[38]; Verein at [14]; Silberquelle at
[18]; Centrotherm at [71].
 (6) All the relevant facts and circumstances must be taken into account in determining
whether there is real commercial exploitation of the mark, including: (a) whether such
use is viewed as warranted in the economic sector concerned to maintain or create a
share in the market for the goods and services in question; (b) the nature of the goods
or services; (c) the characteristics of the market concerned; (d) the scale and
frequency of use of the mark; (e) whether the mark is used for the purpose of
marketing all the goods and services covered by the mark or just some of them; (f) the
evidence that the proprietor is able to provide; and (g) the territorial extent of the
use: Ansul at [38] and [39]; La Mer at [22]-[23]; Sunrider at [70]-[71],
[76]; Centrotherm at [72]-[76]; Reber  at [29], [32]-[34]; Leno at [29]-[30], [56].
(7) Use of the mark need not always be quantitatively significant for it to be deemed
genuine. Even minimal use may qualify as genuine use if it is deemed to be justified
in the economic sector concerned for the purpose of creating or preserving market
share for the relevant goods or services. For example, use of the mark by a single
client which imports the relevant goods can be sufficient to demonstrate that such use
is genuine, if it appears that the import operation has a genuine commercial
justification for the proprietor. Thus there is no de minimis rule: Ansul at [39]; La
Mer at [21], [24] and [25]; Sunrider at [72]; Leno at [55].
(8) It is not the case that every proven commercial use of the mark may automatically
be deemed to constitute genuine use: Reber at [32].

Supermac v McDonalds, EUIPO Cancellation Division, 11.01.19

McDonald’s “BIG MAC” EU trade mark was revoked by the Cancellation Division of the
EUIPO based on a challenged for non-use across its full specification which covered a variety
of foodstuffs and associated services.

Armin Hӓuple v Lidl Stiftung & Co Case C-246/05

49. Thus, under Article 19(1) of the TRIPS Agreement, circumstances arising independently
of the will of the owner of the trademark which constitute an obstacle to the use of the
trademark are to be recognised as valid reasons for nonuse.
50. It is therefore necessary to determine what kind of circumstances constitute an obstacle to
the use of the trademark within the meaning of that provision. Although, quite often,
circumstances arising independently of the will of the owner of the trademark will at some
time hinder the preparations for the use of that mark, the difficulties in question are
difficulties which can be overcome in a good many cases.
51. In that respect, it should be noted that the eighth recital in the preamble to the Directive
states that 'in order to reduce the total number of trade marks registered ... in the
Community ... it is essential to require that registered trade marks must actually be used or, if
not used, be subject to revocation'. It appears in the light of that recital that it would be
contrary to the scheme of Article 12(1) of the Directive to confer too broad a scope on the
concept of proper reasons for non-use of a mark. Achievement of the objective set out in that
recital would be jeopardised if any obstacle, however minimal yet none the less arising
independently of the will of the owner of the trade mark, were sufficient to justify its non-use.
52. In particular, as correctly stated by the Advocate General in point 79 of his Opinion, it
does not suffice that 'bureaucratic obstacles', such as those pleaded in the main proceedings,
are beyond the control the trade mark proprietor, since those obstacles must, moreover, have
a direct relationship with the mark, so much so that its use depends on the successful
completion of the administrative action concerned.
53. It must be pointed out, however, that the obstacle concerned need not necessarily make
the use of the trade mark impossible in order to be regarded as having a sufficiently direct
relationship with the trade mark, since that may also be the case where it makes its use
unreasonable. If an obstacle is such as to jeopardise seriously the appropriate use of the mark,
its proprietor cannot reasonably be required to use it none the less. Thus, for example, the
proprietor of a trade mark cannot reasonably be required to sell its goods in the sales outlets
of its competitors. In such cases, it does not appear reasonable to require the proprietor of a
trade mark to change its corporate strategy in order to make the use of that mark none the less
possible.
54. It follows that only obstacles having a sufficiently direct relationship with a trade mark
making its use impossible or unreasonable, and which arise independently of the will of the
proprietor of that mark, may be described as 'proper reasons for nonuse' of that mark. It must
be assessed on a case-by-case basis whether a change in the strategy of the undertaking to
circumvent the obstacle under consideration would make the use of that mark unreasonable.
It is the task of the national court or tribunal, before which the dispute in the main
proceedings is brought and which alone is in a position to establish the relevant facts, to
apply that assessment in the context of the present action. 55 Having regard to the foregoing
considerations, the answer to the second question referred for a preliminary ruling must be
that Article 12(1) of the Directive must be interpreted as meaning that obstacles having a
direct relationship with a trade mark which make its use impossible or unreasonable and
which are independent of the will of the proprietor of that mark constitute 'proper reasons for
non-use' of the mark. It is for the national court or tribunal to assess the facts in the main
proceedings in the light of that guidance.

Orwoola Trade Mark (1909) 26 RPC 660

Garments that were made from materials other than wool had the mark ‘Orwoola’ affixed; it
was found that this was a misleading use of ‘Orwoola’ due to the verbal pronunciation ‘all
wool’.