EU trade mark dispute: AMSTERDAM POPPERS - what is genuine use?

On 12 March, in case T-1187/23, the General Court of the European Union ruled on a dispute regarding the proof of the genuine use of EU trade mark AMSTERDAM POPPERS.

In October 2009, the US company Funline International Corp. registered the EU word mark no. 008633984 (AMSTERDAM POPPERS) at the European Union Intellectual Property Office (EUIPO). The mark covered goods in Classes 1 and 3 of the Nice Classification, including chemicals for the manufacture of aphrodisiacs, chemical preparations for the stimulation of sexual activity, soaps, perfumery, essential oils and cosmetics. However, in August 2021, the Czech company MS Trade s.r.o. filed a request for total revocation of the mark, based on lack of use for five consecutive years under Article 58(1)(a) EUTMR.

Although the US company submitted a set of evidence, the Cancellation Division considered that it related only to stimulant inhalers (poppers) classified in Class 5, which did not correspond to the goods for which the mark was registered. As a result, both the Cancellation Division and the Board of Appeal revoked the disputed mark for all products.

Funline International Corp. appealed to the General Court, which had to determine whether the mark had been genuinely used.

First, the Court pointed out that the evidence submitted by the applicant focused exclusively on the marketing of poppers - finished products - without demonstrating effective use of the mark for other registered products, such as certain chemicals and cosmetics in Classes 1 and 3. Under EU trade mark law, the use of a trade mark must be appropriate and effective for all the products for which it is registered, not just for a particular category. In addition, case law distinguishes between finished products and raw materials and states that the use of a mark for one type of product does not automatically imply its use for others with different purposes and market perceptions. As a result, the General Court dismissed the appeal for lack of proof of use of the mark for goods in Classes 1 and 3.