In 2012 Francesco Cirillo registered the mark POMODORO in several classes including a wide specification of goods in class 9 (computers and scientific devices). In 2019 Masterbuilders, Heiermann, Schmidtmann GbR ("Masterbuilders") applied to revoke class 9 of that registration on the grounds the mark had not been used on those goods in the EU in the previous five year period. The Cancellation Division cancelled the registration in its entirety in class 9. In November 2020 the Fifth Board of Appeal found that the registered trade mark had been used in relation to "countdown timers; downloadable application software".
Masterbuilders appealed to the EU General Court.
General Court's decision
The General Court stated that it was clear from existing case law that there is genuine use where the mark is used to create or preserve an outlet for the goods or services covered by that registered trade mark. In order to assess whether use is genuine, regard has to be had to all the facts and circumstances regarding the commercial use of the mark, particularly the practices in the relevant economic sector, the nature of the goods or services, the characteristics of the market and the extent and frequency of the use.
The trade mark owner provided evidence that approximately 2,700 timers were sold in 23 member states in the five year period The software had been downloaded 1,621 times since October 2018, mainly by EU customers.
The General Court said that the sales volumes of the timers did not appear to be "very significant". However it stated that use did not need to be quantitatively significant in order to be genuine. Even minimal use could be classed as genuine provided it is regarded as warranted in the relevant sector.
In this case the court noted that the goods in question were not everyday consumer goods, had been sold in the first years of marketing those goods and had been sold in 23 member states. The sales were regular and covered a broad territory.
In the light of this, the General Court found that the mark had been put to genuine use in relation to the timers. A consideration of genuine use does not assess the commercial success of a mark nor review a trade mark owner's economic strategy. Genuine use rules are not intended to restrict trade mark protection to cases where there has been large scale commercial use of the mark in question. Low sales can be offset by the fact that the use of the mark was very extensive or very regular and vice versa.
In respect of the software, the General Court said that a very high proportion of customers (99%) who had downloaded the software were in the EU. Although it said that the volume of downloads was not significant, on the other hand it was not token use. The use was sufficiently significant to show frequency and territorial scope, particularly in this case where the application had only been available for download in six months of the five year use period.
Consequently, Masterbuilders' appeal failed and the registration was found to be valid for "countdown timers; downloadable application software". (The court's judgment is here: Case T‑76/21.)
This is a helpful reminder from the General Court on the requirements for showing genuine use. The court reiterated that looking at sales volumes on their own is not sufficient. Each case will depend on its own facts including the nature of the products, the market in question and the extent and frequency of use of the mark.
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