Litigation between fashion companies in the English Courts often takes place in the Intellectual Property Enterprise Court (IPEC).

In a recent IPEC judgment (albeit not in a case between fashion brands), one of the principal issues was whether two Community trade marks (CTMs) which had been used extensively throughout the UK (but not outside the UK) had been genuinely used.

In this case, IPEC decided against the trade mark owner and the CTMs were revoked as a result.

On the face of it, this is surprising as it flies in the face of the EU principle of a single market and that territorial boundaries are to have no effect. Indeed it was previously considered that use in one Member State could constitute genuine use in the EU.

Take home points

This IPEC decision teaches us that:

  1. it is possible to counterclaim that a CTM has not been genuinely used if it has only been used in one Member State; and
  2. to avoid this argument being made against your CTM, you should use your CTM in a number of EU Member States.

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