How appropriate is the way you use your trademark in the marketplace?


Although it may come as a surprise to many, in order for a trademark to remain in force validly, it is necessary to use it effectively in the marketplace. The manner and scope of such use can be crucial, and there is often a high degree of subjectivity in assessing the sufficiency or adequacy of use. The law stipulates that the mark must be used "as registered" and in all or a substantial part of the territory of registration.


What happens if I use the mark with some variation compared to how I registered it, or only in a part of the protected territory? These are common concerns that we must address on a case-by-case basis, and naturally paying attention to the jurisprudence of the Offices and the Courts.


Regarding the use of the trademark as registered, the law itself anticipates permissible alterations, which are evidently usual and reasonable in a changing market where trademarks are continuously evolving. But how do we gauge such "permissible alterations"? A recent case delivered by the General Court of the European Union (CURIA) (Case T-372/21) may provide us with an example. In the "INSIDE" case, the established case law has been recalled by stating that the registration of a word mark is one that consists entirely of letters or words, represented in a standard form without incorporating any graphic element, and whose object of protection is the word as itself On that basis, the Court upheld EUIPO's first and second instance decisions, ruling that the use of, arguing that the use of two stylized logos incorporating the word INSIDE with graphical elements and colors in the marketplace was appropriate to preserve the validity of the "INSIDE" registration, since its graphic representation did not alter the distinctive character of the word per se.


Concerning the territory where the trademark is used, while ideally it should be used in all or a substantial part of the territory, there may be exceptions depending on the case and other circumstances of use. The EUIPO Board of Appeal, in ruling on Appeal 603/2022‐5, has recently stated that a “minimis rule” cannot be fixed for territory, and that the use of the trademark in a small geographical area may be sufficient if the nature of the business so justifies, provided that the other aspects of use are relevant.


In this case, the use of the EU figurative trademark “HAVANA” had to be assessed and the use was proven in only two cafeterias in Barcelona, one in El Triangle and the other one in Diagonal Mar. Nevertheless, the EUIPO found that this was sufficient for a number of reasons: first, because the services of a bar or cafeteria are provided physically, and if in order to maintain the trademark in force it were required to open cafeterias in various cities and countries of the European Union, a significant business burden would be imposed on companies other than large restaurant chains with capacity to expand; moreover, the fact that Barcelona is one of the most densely populated cities in Spain with a large number of tourists, particularly from the European Union, was taken into account, which increases the territorial (population) impact of the use of the trademark. This decision could still be appealed before the General Court of Justice of the European Union, and it will certainly be of interest to know the Court's assessment, as this is a case that will undoubtedly raise controversy.


Sugrañes will remain attentive to the evolution of the jurisprudential doctrine and will be pleased to assist you in assessing the trademark strategies of your project.

Claudia Sotomayor

Lawyer. Senior associate.