The registration of a European trademark grants its holder an exclusive right to commercial exploitation. However, this exclusive right does not mean that the monopoly is guaranteed without condition. The trademark holder must exploit the mark, in order to maintain the trademark right. This is intended to prevent unused trademarks from crowding the trademark register and hindering other users from accessing or registering similar marks. Under the EU trademark law, the trademark holder can begin the use of the trademark as late as five years after the registration date. This is called the “grace period”.

For a trademark holder seeking to protect their trademark in a litigation, collecting evidence on the use of the trademark becomes crucial. Notably, the trademark holder may lose his rights if he fails to prove that the trademark has been used for five consecutive years, upon request by a third party to the Office. How to collect evidences is also an essential question for trademark holders.

In a recent judgment on July 17, 2024[1], the European Court of Justice clarified the evidentiary requirements in trademark law, specifically addressing the genuine use of a European trademark and the probative value of undated evidence.

The case in question involved a dispute between W.B Studio and E.Land Italy Srl over the European BELFE trademark, registered in 1998 and covering clothing and fashion accessories. W.B. Studio sought the revocation of this trademark, arguing that it had not been used for certain product categories. The EUIPO partially upheld the trademark’s validity, while W.B. Studio contended that undated photos were insufficient to demonstrate genuine use of the trademark and questioned the adequacy of other evidence, such as invoices and catalogs, in proving product commercialization.

The Court adopted a comprehensive approach to analyzing evidence of use, ruling that undated evidence could be acceptable if assessed in conjunction with other evidence to form a cumulative body of proof. In this case, the undated photographs of labels were supported by other dated documents, such as invoices containing corresponding product codes.

Another interesting question concerns the place of use. The invoices submitted by the trademark holder indicated that the goods were manufactured in Italy and exported to China. The Court clarified that a trademark holder could prove serious use of their mark even if the products bearing the mark were manufactured, stored, or handled within the EU with the intention of selling them outside the European Union.

This judgment is good news for European trademark holders, especially those who mainly export their products outside the EU. By relaxing the evidentiary requirements, the European Court facilitates trademark holders' ability to defend their rights. It expands the scope for evidence gathering and mitigates the risk of revocation on purely technical grounds.

Christine Chai, Managing Partner

Marco Mouchot Ribas, Trainee Lawyer

  [1] General Court, 17/07/2024, T‑50/23, Belfe