The Oscars: A vibrant trademark

A trademark must be used normally after five years. If not, third parties can initiate a cancellation action against the mark. The question is though: where should that use take place? If the use takes place outside the European Union, should advertising in the European Union be sufficient? This is crucial for many industries such as the travel industry, real estate sales or large international events taking place outside the EU.

 

European authorities made two judgements on this subject last year. The criterion they formulated is: if a trademark owner targets audiences in the European Union through advertisements in order to pursue sales for products and services outside the EU, then there is sufficient genuine use.

In the latest case, trademark OSCAR was at issue. The Academy Award ceremony takes place in Los Angeles, but the event is widely promoted in the EU to attract viewers. It is also licensed to many television stations in the EU and the shows are watched by millions of people in the EU. Therefore, the trademark is deemed to be used normally in the EU and remains valid. If services are offered outside the EU but the sale is also aimed at consumers in the EU, register the mark as a Union mark as well.

trademark-registration



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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?