It is a commonplace to say that we live in a global market. Web 2.0 and now Web 3.0 have played a key role in breaking down physical boundaries and building a digital world never before known. However, and despite numerous international treaties, regional agreements and enhanced cooperation, intellectual property rights are state monopolies.
One of the peculiarities of trademarks and absent from any other intellectual property right is that the exclusivity remains in force as long as the sign is used in commerce. The scope and characteristics of this requirement – already included in the Paris Convention of 1883 – have given rise to controversy over the years (see for example the rather interesting judgment of the CJEU C‑622/18 on the existence of a right to obtain compensation for damages resulting from the infringement of a mark never used).
In a recent decision, the General Court (T-768/20 ECLI:EU:T:2022:458) ruled on the effect within the European Union of certain uses of trade marks which occurred abroad (29). The case involved an EUTM-owned US hotel company which, despite only supplying its hotel rooms to the US, targeted EU consumers through advertisements and a portal of reservation accessible on the territory of the EU. According to the Court (38), the Board of Appeal of EUIPO unlawfully excluded such evidence as proof of genuine use because the hotel services were provided outside the EU, ignoring that The advertisement is also a form of use.
The case should not be new, at least for Spanish lawyers. In 2021 on the 15e The court chamber of the province of Barcelona has already ruled (238/2021, ECLI:ES:APB:2021:235) in a rather similar case, that advertising for hotel services provided in Mexico should be sufficient to satisfy the requirement of genuine use of the Spanish trade mark (22).
The Spanish decision is very interesting and in itself, in a way predicted what the GC has just confirmed. The provincial court recalls the Recommendation concerning the protection of trademarks and other industrial property rights in signs on the Internet and confirms (34) that there is no disadvantage arising from the principle of territoriality in considering that the sign was used on Spanish territory even if the place of actual provision of the hotel services was Mexico.
Although the lessons of the two judgments apply (in principle) to any classification of Nice, it is no coincidence that they are called hotel services, perhaps one of the best examples of a global digital market . These decisions provide highly relevant advice to attorneys and clients on trademark registration strategies that can lead to long-term filing and maintenance cost savings. However, a very careful case-by-case analysis must be made, with particular emphasis on national case law because, ultimately, intellectual property rights remain one of the crown jewels for any country.