Grand stripes and single-brand stores – A great combination for genuine use?
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Marcel Pemsel
Aug 20, 2025, 1:25:17 AMAug 20
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Grand stripes and single-brand stores – A great combination for genuine use?
No, you can’t have it all – At least you cannot claim genuine use
of all goods sold in a single-brand store if your trade mark is only
used on the storefront. That is the gist of a recent judgment of the General Court (T-372/24).
Background
K-Way owns an EU trade mark for the following sign:
Background
K-Way owns an EU trade mark for the following sign:
It was described as follows:
K-Way submitted evidence of use with the Cancellation Division of the European Union Intellectual Property Office (‘EUIPO’). The latter revoked the contested mark except for ‘outerwear’ and ‘footwear’ in class 25.
Upon K-Way’s appeal to the EUIPO’s Board of Appeal (‘BoA’), the trade mark was maintained for ‘suitcases’, ‘wallets’ and ‘backpacks’ in class 18 as well as ‘clothing (excluding outerwear)’ and ‘headgear’ in class 25.
K-Way appealed to the General Court.
The General Court's Decision
The General Court dismissed the appeal with the exception of ‘shopping bags’.
Use for all goods sold in single-brand stores
K-Way argued that it operates single-brand stores, in which it only sells its own goods. These stores show the trade mark at the entrance, e.g. as follows:
"A rectangular stripe consisting of parallel vertical stripes of various sizes, defined in the colors navy blue, orange, yellow, orange, and navy blue, arranged in this sequence. This stripe is applied to goods, generally near seams, hinges, shoulder pads, cuffs, fittings, finishes, or edges."The sign was registered in 2006 inter alia for goods in classes 18 and 25. In 2019, an Italian individual filed an application for revocation of K-Way’s trade mark claiming non-use.
K-Way submitted evidence of use with the Cancellation Division of the European Union Intellectual Property Office (‘EUIPO’). The latter revoked the contested mark except for ‘outerwear’ and ‘footwear’ in class 25.
Upon K-Way’s appeal to the EUIPO’s Board of Appeal (‘BoA’), the trade mark was maintained for ‘suitcases’, ‘wallets’ and ‘backpacks’ in class 18 as well as ‘clothing (excluding outerwear)’ and ‘headgear’ in class 25.
K-Way appealed to the General Court.
The General Court's Decision
The General Court dismissed the appeal with the exception of ‘shopping bags’.
Use for all goods sold in single-brand stores
K-Way argued that it operates single-brand stores, in which it only sells its own goods. These stores show the trade mark at the entrance, e.g. as follows:
K-Way
contended that this constitutes genuine use for all goods sold in the
store, even if the trade mark was not applied directly to the goods,
their packaging or labels. K-Way referred to the Celine
judgment of the Court of Justice of the EU (‘CJEU’), according to which
it is not necessary to affix the mark at issue to the goods themselves
to prove genuine use. It is sufficient that a company or shop name is
used in such a way as to create a link with the goods marketed.
After recalling the principles of genuine use, the judges explained the General Court’s GNC LIVE WELL decision. It could be read as establishing a general principle that the use of a trade mark on a single-brand store is sufficient to create a link with the goods sold in that store (paras. 75 and 76 of that decision). The judges clarified that the use of the trade mark on the store in that case was only one factor among others considered in the assessment of genuine use. The trade mark owner had also submitted other items of evidence, such as invoices and product packaging showing the mark.
Therefore, the use of a mark on a store in which only goods of the trade mark owner are sold is only a contributing factor to show use of the mark for the goods. Such use does not automatically lead to the conclusion that consumers create a sufficient link between the trade mark and the goods sold in the store.
Furthermore, the judges considered that K-Way used several marks for its goods. This may prevent consumers from perceiving a link between the use of the mark on the storefront and the goods marketed in those stores, to which the mark has not been affixed.
K-Way’s argument that it used the other marks only for some goods while the contested mark has been used for all goods, also on packaging and in advertising, was rejected by the Court because genuine use cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned.
Use for shopping bags
K-Way had submitted pictures and invoices for shopping bags, the latter not reproducing the trade mark.
The judges referred to consistent case law and held that invoices are intended to reproduce the list of products sold, so that they contain the name of the item concerned, accompanied, where appropriate, by a reference. It is not necessary that the contested mark or images of the products bearing the contested mark be reproduced on the invoices.
However, for such invoices to constitute relevant evidence of use, they must actually concern those goods and it must be established that the latter bore the mark or, at least, that the mark was used, in accordance with its essential function, publicly and externally, for the sale of those goods to consumers.
The Court found that the invoices and pictures of shopping bags could be linked to each other because both bore the same name and reference number. Since the BoA did not accept genuine use for these goods, the judges annulled the contested decision to this extent.
Comment
The ruling shows that store-sign use does not equal genuine use. While the Celine and GNC LIVE WELL decisions had left room for the idea that storefront use might cover a wide range of goods, the General Court has now made it clear: that is only part of the picture. Without product-level evidence – like labels, packaging or ads – showing the mark in action, even the most stylish flagship store will not rescue unused trade marks from revocation.
The shopping bag subplot is equally instructive. The Court treated invoices and product photos like a matching set: if they can be linked with each other, they are able to establish genuine use.
The moral of the story (not just for single-brand store owners) is to keep good records of use. The most convincing evidence to the EUIPO are invoices in combination with advertising, catalogues or similar marketing materials showing the goods with the trade mark and, of course, the notorious link between these two types of evidence.
After recalling the principles of genuine use, the judges explained the General Court’s GNC LIVE WELL decision. It could be read as establishing a general principle that the use of a trade mark on a single-brand store is sufficient to create a link with the goods sold in that store (paras. 75 and 76 of that decision). The judges clarified that the use of the trade mark on the store in that case was only one factor among others considered in the assessment of genuine use. The trade mark owner had also submitted other items of evidence, such as invoices and product packaging showing the mark.
Therefore, the use of a mark on a store in which only goods of the trade mark owner are sold is only a contributing factor to show use of the mark for the goods. Such use does not automatically lead to the conclusion that consumers create a sufficient link between the trade mark and the goods sold in the store.
Furthermore, the judges considered that K-Way used several marks for its goods. This may prevent consumers from perceiving a link between the use of the mark on the storefront and the goods marketed in those stores, to which the mark has not been affixed.
K-Way’s argument that it used the other marks only for some goods while the contested mark has been used for all goods, also on packaging and in advertising, was rejected by the Court because genuine use cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned.
Use for shopping bags
K-Way had submitted pictures and invoices for shopping bags, the latter not reproducing the trade mark.
The judges referred to consistent case law and held that invoices are intended to reproduce the list of products sold, so that they contain the name of the item concerned, accompanied, where appropriate, by a reference. It is not necessary that the contested mark or images of the products bearing the contested mark be reproduced on the invoices.
However, for such invoices to constitute relevant evidence of use, they must actually concern those goods and it must be established that the latter bore the mark or, at least, that the mark was used, in accordance with its essential function, publicly and externally, for the sale of those goods to consumers.
The Court found that the invoices and pictures of shopping bags could be linked to each other because both bore the same name and reference number. Since the BoA did not accept genuine use for these goods, the judges annulled the contested decision to this extent.
Comment
The ruling shows that store-sign use does not equal genuine use. While the Celine and GNC LIVE WELL decisions had left room for the idea that storefront use might cover a wide range of goods, the General Court has now made it clear: that is only part of the picture. Without product-level evidence – like labels, packaging or ads – showing the mark in action, even the most stylish flagship store will not rescue unused trade marks from revocation.
The shopping bag subplot is equally instructive. The Court treated invoices and product photos like a matching set: if they can be linked with each other, they are able to establish genuine use.
The moral of the story (not just for single-brand store owners) is to keep good records of use. The most convincing evidence to the EUIPO are invoices in combination with advertising, catalogues or similar marketing materials showing the goods with the trade mark and, of course, the notorious link between these two types of evidence.
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