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Is the EU really a single market: Not for EU trade marks

Published on 26 Apr 2016 | 3 minute read

Turkish footwear firm Intermar has lost its appeal against a decision issued by the UK Intellectual Property Office (UK IPO) to permit clothing giant Nike to register ‘JUMPMAN’ as a trade mark in the UK.

The ruling is expected to have significant ramifications for smaller and medium-sized brand owners seeking to rely on EU Trade Marks (EUTMs - until recently known as CTMs) to protect their brands across the EU.

Commenting on Friday's ruling, Dale Carter, Trade Mark Attorney at Rouse, who represented Intermar said:

“From a brand protection and enforcement perspective this ruling raises significant question marks over the effectiveness of EU Trade Marks. The effects on smaller and medium-sized companies could be huge and companies should seek advice from their Trade Mark advisors on the potential implications of this decision.

“At the heart of the issue is the question of scale and scope of use of an EU Trade Mark. Larger companies trading in all or many of the EU’s 28 member states are unlikely to be affected by the ruling. However, for those companies with a smaller sales footprint in the EU, or even those larger firms focusing on just one or two EU member state markets, enforcing an EU Trade Mark that has been put to genuine, but limited, use may no longer be possible.

“In light of this decision companies should consider whether EU Trade Marks offer the most appropriate form of trade mark protection for their businesses. To help avoid attacks against their trade marks based on non-use, companies with small scale trade mark use may be forced to register their trade marks nationally in individual EU member states or 'double up' on trade mark protection by registering trade marks both nationally and at an EU level.

“The ruling is likely to be welcomed by larger traders in the EU, who will benefit if uncertainty surrounding the issue drives smaller players to protect their trade marks nationally rather than at an EU-wide level, or to shy away from enforcing their EU trade marks for fear of this decision being followed.

“The ruling, while undoubtedly good news for lawyers, is ultimately a blow for smaller businesses across the EU who will have to pay considerably more to ensure their brands are protected and their trade marks can be enforced against third parties.

“Let companies be in no doubt, this decision is not just about business in Bulgaria. It has importance for SMEs across the entire EU who are making only localised use of EU Trade Marks.


The case explained

Previously, Turkish footwear firm Intermar Simanto Nahmias (Intermar) successfully opposed an application by Nike to register an EU Trade Mark for its ‘JUMPMAN’ brand. Intermar's opposition was brought before the EU Trade Mark Office and was based on its earlier registration and use of the trade mark ‘JUMP’ on its footwear products. The EU Trade Mark Office accepted Intermar's evidence, found the marks JUMP and JUMPMAN to be similar and refused Nike's JUMPMAN trade mark application at an EU level.

When Nike then converted its failed EU Trade Mark application into a UK trade mark application, Intermar again opposed Nike’s attempts to register 'JUMPMAN', this time before the UK Intellectual Property Office (UK IPO). This was in essence a repeat of the previous opposition, with the same parties relying on the same arguments and evidence in both proceedings.

However, despite Intermar having sold 55,000 pairs of shoes bearing the JUMP mark to a company in Bulgaria within the previous five-year period, the UK IPO decided this evidence failed to demonstrate sufficient ‘use’ of the JUMP trade mark by Intermar in the context of EU trade mark legislation. Thus, despite Intermar having succeeded in the EU opposition, its UK opposition was dismissed by the UK IPO.

In October 2014, Intermar lodged an appeal against the UK IPO's decision to reject its opposition. Friday's appeal ruling, handed down by the UK Appointed Person, upholds the previous UK decision, namely that Intermar’s sales of 55,000 pairs of JUMP shoes, whilst considered genuine use of the JUMP mark, did not constitute use on a sufficient scale to satisfy the genuine use threshold of EU Trade Mark law.

The case raises significant question marks over the effectiveness of EU Trade Marks as a means of adequately protecting the legitimate trade mark interests of smaller and medium-sized brand owners within the EU.

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Rouse Editor
+44 20 7536 4100
Rouse Editor
+44 20 7536 4100