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Fomanu AG v EUIPO: Genuine use does not extend to CDs, DVDs and software

Date: 3 January 2020

 

In a decision related to genuine use (Fomanu AG v EUIPO; Case T-323/18), the General Court found that the free distribution of the CDs, DVDs and software on which the contested trade mark was affixed did not constitute genuine use of that trade mark.

 

Fujifilm Imaging Germany applied to revoke an EU trade mark registration owned by the German company Fomanu for the figurative sign shown below in Classes 9, 16, 38, 40 and 42:

 

butterfly_46

 

Of particular interest is the Court’s reasons why it rejected the applicant’s claim that the Board had erred in finding that no proof of genuine use of the contested mark had been adduced in respect of “compact discs; digital video discs (DVDs); programs computer software and software, in particular exchange, storage, reproduction and systematically entering data “, falling within Class 9... 

 

Fujifilm's distribution of CDs, DVDs and Software

 

The applicant is in the business of printing pictures. During the relevant period, they had sold more than 1,250,000 photobooks and 550,000 calendars and distributed 5,000 CDs and DVDs. Over the same period, there had been a million deliveries, including software essential to design the photo products. That software had been made available to customers via a download from the EUTM proprietor’s website or from a CD or DVD sent by the EUTM proprietor to its customers. Therefore, the Court noted, the CDs, DVDs and software were distributed either for the purpose of producing printed photo products or as part of the final photo product.

 

Free distribution means no market participation

 

Although the applicant claimed that the CDs and DVDs had been “sold” in large quantities to buyers of photo products, the court found that the CDs and DVDs were not in fact distributed independently; rather, their free delivery had been carried out exclusively within the framework of marketing of printed photo products to promote their sale. The software would be useless if its use did not generate orders for the photo products and, therefore was only a tool for the order and the realisation of the printed photo products, and not a product sold independently to third parties.

 

It followed that the applicant did not compete in the market for CDs, DVDs and software. Indeed, the CDs, DVDs and software on which the disputed mark had been affixed were not offered independently, as people had to purchase photo products in order to acquire them. Moreover, it was not established or even argued that the applicant would consider penetrating the market for CDs, DVDs and software. The court concluded that affixing the contested mark to the CDs, DVDs and software did not contribute to creating an outlet for those goods.

 

Fujifilm's distribution ruled as not 'genuine use'

 

Accordingly, the free distribution of CDs, DVDs and software bearing the contested mark did not constitute genuine use of the contested mark for goods in Class 9, since the CDs, DVDs and software were not used on the market of those products, but instead exclusively in the photo products market.

 

This case confirms the decision of the CJEU in Silberquelle (Case C-495/07) that use of a word or phrase in relation to free promotional items is not “genuine trade mark use” under EU laws.

 

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