Q&As

Is there any guidance or case law regarding whether there is a genuine use of a trade mark within the EU if a party provides their services in question outside of the EU, but those services can be booked from within the EU? By way of example, a hotel may be located outside of the EU but customers may book rooms to that particular hotel from within the EU

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Produced in partnership with Ashley Roughton of Ipchambers.eu
Published on LexisPSL on 29/04/2016

The following IP Q&A produced in partnership with Ashley Roughton of Ipchambers.eu provides comprehensive and up to date legal information covering:

  • Is there any guidance or case law regarding whether there is a genuine use of a trade mark within the EU if a party provides their services in question outside of the EU, but those services can be booked from within the EU? By way of example, a hotel may be located outside of the EU but customers may book rooms to that particular hotel from within the EU
  • Use to avoid a claim for revocation
  • Use based trade mark rights

For the purposes of this Q&A, we have assumed that the trade mark in question is registered in the EU, and that the hotel room referenced is booked directly with the hotel and not through a third party provider.

The basic rule is that the trade marks system operates on a use it or lose it system. Trade marks must be used or if not used then the registrations are revoked. The absence of use must be for a clear five year period and there must be no 'proper' reasons for that non-use. Use can also be relevant in other respects, such as to show that there are trade mark rights arising as a result of use (in England, known as the right to restrain passing off).

As a matter of EU trade mark law the position is complicated and the question needs to be answered from two perspectives, which are (1) use to avoid a claim for revocation and (2) use based trade mark rights.

Use to avoid a claim for revocation

There has to be use of the trade mark within the jurisdiction of the EU. The question

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