It is a fact well known that the European Union Intellectual Property Office (EUIPO) has particularly strong standards when it comes to figuring out whether a trademark is actually being used for the products and services it is supposed to cover.
It is not enough to demonstrate that the trademark has indeed been exploited, but it is also necessary to prove that the exploitation covered the products or services requested during the registration.
This crucial aspect was recently emphasised in a decision of the EUIPO Board of Appeal from May, 25th 2021 (R 1645/2020-4).
In this matter, Mariano José Bueno Cortés (the opponent) filed an opposition on their prior Spanish national trademark CANDIDASTOP, registered in class 5 for pharmaceuticals. The applicant had asked the opponent to provide evidence of their use of the trademark; however, the Opposition Division did not go through the evidence and simply focused on the likelihood of mixing up the trademarks (which the Division ended up dismissing).
The Board of Appeal was asked to look at this matter, and went with a different approach by starting with analysing the evidence of the prior trademark that were presented during the opposition stage.
The Board of Appeal worked in two stages.
First, the Board checked that the evidence provided displays a serious exploitation of the prior trademark over the five years preceding the registration of the opposed trademark on the territory concerned by the prior trademark (the prior trademark is a Spanish national trademark). The opponent provided enough evidence on this, and the Board of Appeal confirmed that the prior trademark was indeed seriously exploited.
Then, the Board went over the products for which the trademark is actually used, to check if they are indeed pharmaceuticals (products for which the prior trademark is registered and on which the opposition is based), as claimed by the applicant. The Board, after its analysis, concluded that the trademark was, in fact, used for dietary supplements, which are not pharmaceuticals.
The Board confirmed the rejection of the opposition, on the basis that the opponent could not prove that the trademark was exploited for the products it was registered for and on which the opposition is based.
With this in mind, it must be remembered that, when the use of a trademark has to be showcased, this use has to concern the products or services for which the trademark is registered and that its use for similar products is not enough to validate it.
This decision shows again that it is important to precisely define, when registering a trademark, the products and services for which it will be used and to write an appropriate wording. It is also necessary to regularly check that the trademark and its use match to, if need be, proceed to another registration showcasing the new products or services used.
Despite being too often overlooked, writing the wording of a trademark is a crucial part!