The European Union Intellectual Property Office (EUIPO) has cancelled several AfD word and figurative marks – including the party logo and the abbreviation “AfD”. The reason for this is the lack of serious use of the trade marks over a period of five years. This means that the party will lose trade mark protection at EU level for all registered goods and services if the decision becomes legally binding. The proceedings show: Anyone who does not demonstrably use trade marks in the course of trade risks their complete revocation.
Facts of the case
At the request of the Berlin law firm Lubberger Lehment, the European Union Intellectual Property Office (EUIPO) recently ordered the cancellation of several word and figurative marks belonging to the Alternative for Germany (AfD) party. The trade marks protected, among other things, the party logo
and the abbreviation “AfD” for a large number of goods and services throughout the EU. The reason for the cancellation request was that the AfD had not used the trade marks seriously within the meaning of the EU Trade Mark Regulation over a period of five years. The AfD will therefore lose trade mark protection at EU level for these signs and for all registered goods and services, provided that the decision becomes legally binding. The AfD has also apparently confirmed that cancellation proceedings against seven of its German trademarks are pending before the German Patent and Trade Mark Office (DPMA), which may be decided on next year.
Strict requirements: What counts as genuine use?
According to the European Union Trade Mark Regulation, but also regulated in almost all trade mark laws around the world, there is no explicit obligation to use registered trade marks, but prolonged non-use can trigger cancellation proceedings and lead to the revocation of the trade mark. According to Article 58(1)(a) EUTMR, third parties are entitled to initiate cancellation proceedings against an EU trade mark if it has not been used or has not been put to genuine use in the course of trade in relation to the registered goods and services for an uninterrupted period of five years. This means that the trade mark must not only be used behind closed doors or symbolically, but publicly and in a market-oriented manner as an indication of origin. Trade marks that are registered but not used prevent others from using such trade marks themselves in the course of trade. This is what the legislator wanted to prevent with the possibility of cancelling such trade marks.
The burden of proof for use always lies with the trade mark owner
In revocation proceedings following non-use, the full burden of proof always lies with the trade mark owner. They must prove that the trade mark has been used seriously and to identify goods or services within the relevant period. The criteria of place, time, extent and type of use must be demonstrated cumulatively and substantiated. Applicants do not have to prove the contrary, but merely demonstrate plausible doubts about the evidence.
EUIPO decision: The trade mark remains in the cosmos of the parties
The EUIPO emphasised in the several proceedings (including no. C 62093 against the Union word mark AfD, EM 11 742 467 and C 62 092 against the Union figurative mark EM 16 423 063) that the documents submitted by the AfD only document internal party use of the trade marks. Orders, invoices and the nature of the products (flyers, pens, stickers, typical promotional items) suggested that the goods and services were primarily intended for regional associations, parliamentary groups and party committees. The invoice addresses, mostly belonging to party organisations, and the high number of corresponding orders further support this finding. The online publications and services could also not be categorised as trademark use by outsiders due to a lack of traceable retrieval figures or evidence of use outside the party structures.
Precisely because of the high profile of the party and its abbreviation in Germany, the average consumer does not typically recognise a clear economic indication of origin for goods or services, but simply the political orientation or the name of a party. However, trade mark protection presupposes that the trade mark serves as a product identifier in the course of trade, which could not be credibly demonstrated here.
According to the EUIPO’s decision, the AfD has the right to appeal. In the case of the word/figurative mark, the appeal has already been lodged.
Frequent problem of non-use has serious consequences for trade mark owners
The non-use of trade marks is a serious risk for all trade mark owners. In most cases, the failure to make sufficient use only has an impact when third parties challenge the trade mark. The attacked party can then use the non-use as a means of defence and even launch a counter-attack of cancellation.
It is particularly important to emphasise that it is not only the non-use of the trademark that is harmful, but also the use of the trademark in a form that deviates from the registered form (e.g. in colour or arrangement of words and images). The consequences can be very unpleasant for trade mark owners, which is why a good trade mark usage strategy and documentation of proof of use are essential.