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EU General Court upholds trade mark revocation for non-use

Written by William Ball, a year 10 work experience student from Saint Edmund's Catholic School on 18 July 2018

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The EU General Court has backed and allowed the revocation of Star Television Production’s figurative trade mark by the European Union Intellectual Property Office (EUIPO). The decision came on Friday 13th of June after much debate.

The logo featured the word ‘Star’ next to an illustration of a star. Star Television applied for the trade mark and it was subsequently registered for use in classes 9, 38 and 42 in 2009. For amongst other things, software, broadcasting services, database access services.

In 2015, video producer Marc Dorcel requested that the EUIPO revoke the trade mark from registration because it had allegedly not been used in commerce in relation to the registered classes for 5 years.

Dorcel’s request was accepted quickly, with the mark being revoked by the EUIPO’s Cancellation Division a year later in 2016. Star Television, still an active company, went on to appeal the decision.

In 2017, the appeal was dismissed by the EUIPO’s Second Board of Appeal because it was found that Star Television worked in content production, for which the ‘Star’ trade mark did not cover. Star Television failed to provide any proof of any budgetary information associated with the mark and its goods and services. This would have proved to the Board of Appeal that the trade mark was in use in commerce.

Star Television argued that it had been wrongly criticised for not providing evidence of the figures for the trade mark’s proper use.

Dorcel then requested that Star Television pay him the costs incurred during the proceedings after the EUIPO’s decision was formally upheld by the General Court – who stated that Star Television ‘failed to provide any quantifiable information of this kind’ (referring to proof of proper commercial use).

It was found that the content Star Television produced (outside of the trade mark’s goods and services) was transmitted and broadcasted by a third party, not the company its self. This demonstrated that for the last 5 years, Star Television had been working in services relating to class 41, for which the trade mark did not cover. The General Court explained, ‘use of the mark in this way does not establish its use for goods and services it is registered to cover.’

Finally, Star Television’s final appeal was dismissed and the Genera Court ordered it to pay all costs incurred by the EUIPO and Marc Durcel.

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