A recent decision of the UK Intellectual Property Office (‘IPO’) has considered the issue of a ‘genuine use’ of a Community Trade Mark (‘CTM’). The case concerns Nike and Intermar Simanto Nahmias (‘Intermar’) in relation to Nike’s application to register ‘JUMPMAN’ as a trade mark in the UK.
Spanish-based Intermar is the proprietor of the CTM ‘JUMP’. It was previously successful in opposing Nike’s JUMPMAN CTM application. Nike subsequently applied for national trade marks across several EU member states, including the UK.
The IPO dismissed Intermar’s opposition on the basis that it has not demonstrated genuine use of its JUMP trade mark across the EU and therefore cannot rely on its CTM registration in order to oppose Nike’s UK trade mark.
Intermar provided evidence that it had sold 55,000 pairs of trainers bearing the Jump mark to a Bulgarian customer during the last 16 months, with sales totalling US$476,000. This customer had then sold 170 pairs of these trainers to a company in Romania.
The IPO considered that this was insufficient to demonstrate genuine commercial use of the CTM within the relevant five year period.
This case raises interesting issues in relation to the requirement for owners to use their CTMs outside of their national EU member state. Recent decisions of the European member state courts suggest that substantial use of a CTM which is confined to the owner’s national state may be insufficient to constitute genuine use of the relevant CTM, although clearly this depends on the circumstances of the case.
The developing precedent that appears to be forming from these recent decisions of the EU member state courts is likely to have implications for CTM owners, in particular smaller businesses whose operations are primarily focussed in one geographical area.
Businesses may therefore be better protected to apply for trade marks in each EU member state in which they operate and avoid any uncertainty. However this is likely to be less cost effective and place an even greater onus on businesses to consider their trade mark portfolio at every stage of expansion.
Intermar have indicated that they will contest the IPO’s decision. It will therefore be of particular interest to see whether there is further clarity offered on the issue of genuine use and the implications that this will have for interested parties. We will keep you updated.