Genuine use of the trademark on the internet – class 38) proof of use – revocation under art.51(1)(1)(a) EUTMR

Decision n. 7476C of EUIPO deals with several interesting issues relating TM owner’s obligation to put the registered trademark into genuine use and minimum standard criteria of documentary evidences supporting the proof of use of the trademark in the Internet. The procedure has been initiated by the “MYSELF.IT” domain name owner (Piazza Affari, hereinafter “PA”), and was aimed at paralyze “.it” Panel decision trasferring the myself.it domain to Conde Nast Italy, alleged to infringe CN’s rights on the MYSELF European Community Trademark, covering a wide number of services including “email services” and many other in class 35 (advertising); 38 (telecommunications). PA then challenged the “.it” Panel decision before the Milan Court seeking a declaratory of lawful use of the MYSELF.IT domain which resulted in a “vanity email service”, by contemporary filing the revocation of the MYSELF CTM from all claimed e-mail and telecommunication services on the basis of lack of use for more than 5 years after registration.

The Office quoted paragraph 4 of “Centrotherm” GC decision on 15/09/2011, T-427/09, establishing that “The rationale for the requirement that a mark must be the subject of genuine use in order to be protected under EU law is that OHIM’s register cannot be compared to a strategic and static depository granting an inactive proprietor a legal monopoly for an unlimited period. On the contrary, and in accordance with recital 10 of Regulation No 207/2009, that register must faithfully reflect what companies actually use on the market to distinguish their goods and services in economic life (see, to that effect and by analogy, order in Case C‑259/02 La Mer Technology [2004] ECR I-1159, paragraphs 18 to 22).”

Then the Office examined all documentary evidences provided by Conde Nast in order to demonstrate genuine use of the MYSELF trademark in several classes of products and services, namely: marketing (class 35); communications; electronic keynotes (including blogs); delivery of texts messages and information by means of communication network (class 38); and entertainment; publication and management of games and lotteries (class 41).

With regard to services in class 38, the EUIPO cancellation division shared the requestor’s reliefs, stating that using third parties’ social networking services on the company website (as the Facebook; Linkedin or Twitter company profiles) is a basic action in marketing strategy adopted by most of online magazines, but this does not means that online-magazine editors may be considered as the providers of communicatio services. Indeed, the activation of a Facebook page using the same title of the online magazine is nothing more than an ancillary use within the class 9 product (digital magazine), and the ownershp of a Facebook page does not make its owner a class 38 service provider. The same, articles and posts edited on the Internet are not “provision of blogs and other electronic keyboard services”: this related indeed with the ordinary activity of any digital magazine, and it is something completely different from the online messaging platforms. In any case, the Office remarked the lack of any genuine evidence relating the nature of the use of the MYSELF trademark with the intent to mantain or take any market share for these services.

A part a limited number of products, the MYSELF trademark has been entirely revoked from all services in class 38, 41, and 42.