Up in a puff of smoke: Tobacco company loses a trademark due to non-use

The EU General Court recently dismissed a registered owner’s appeal in a case concerning the revocation of their EU trade mark registration for tobacco products on the grounds of non-use. The ‘GOLD MOUNT’ case serves as a reminder for companies to maintain their marks’ use; and to gather and retain relevant materials documenting such use.

27 June 2017

Is your company taking the necessary steps to protect its registered rights?

This month the EU General Court dismissed a tobacco company’s appeal against the European Union Intellectual Property Office's (EUIPO) decision to revoke its figurative ‘GOLD MOUNT’ trade mark, which was made up of the words ‘GOLD MOUNT’ and an image of a mountain. In this case (Kaane American International Tobacco Company FZE v EUIPO, Case T-294/16), the tobacco company was unable to show genuine use of the mark during a continuous period of 5 years, in defence of its registration against the revocation proceedings before EUIPO. The company submitted evidence of the use of the ‘GOLD MOUNT’ expression, including evidence of participation in various international tobacco industry trade fairs. The court, however, agreeing with EUIPO, held that this was not sufficient as the company attended these fairs under the company name Kaane. While the court accepted the evidence of the expression ‘GOLD MOUNT’ appearing on a number of photographs of the exhibition booths at the fairs, the other dominant element of the mark – the mountain – was not present on the evidence of use. Thus, the tobacco company failed to provide evidence of use of the mark as registered.

Trade Marks Act 1994 and EU Trade Mark Regulation list the circumstances in which a trade mark registration may be revoked, including no genuine use in the first five years and no genuine use over a continuous period of five years at any time after registration. Genuine use in this context means real commercial exploitation of the mark on the given market. 

Businesses should ensure they put their trade marks into use and keep track of the relevant dates. Such use should be well documented in order to serve as a proof in potential proceedings. As illustrated by the Kaane case, lack of awareness of legal requirements by the companies can lead to incurring high litigation costs when fighting a revocation application filed by third parties. As filing of such application is incomparably cheaper, it could easily be taken advantage of by the company’s competitors. 

Should you have any queries with regard to protection of your trade mark, please get in touch with Paul Carlyle, Ashley McLean or your usual Shepherd and Wedderburn contact.