From Braunschweig to Luxembourg: When local hospitality constitutes genuine use
Marcel Pemsel
From Braunschweig to Luxembourg: When local hospitality constitutes genuine use
Can a single steakhouse in a small German city establish genuine use
of an international trade mark designating the EU for hotel and catering
services? In Altendorfer v EUIPO
(T-297/25), the General Court confirmed that local use combined with
online presence and an international reputation can satisfy the
requirements for genuine use under EU trade mark law.
Background
In
2012, Haus zur Hanse GmbH & Co. KG (“Haus zur Hanse”) obtained an
International Registration designating the EU for a figurative mark
mainly consisting of the word “OX” The registration covered, inter
alia, “services for providing food and drink; hotel services” in class
43.
In September 2020, Mr. Heinz Thomas Altendorfer filed a revocation application on the ground of non-use (Art. 58(1)(a) EUTMR).
The
European Union Intellectual Property Office (“EUIPO”) revoked the
contested trade mark in its entirety. Upon appeal by Haus zur Hanse, the
EUIPO's Board of Appeal (“BoA”) partially reversed this decision,
finding that the mark had been genuinely used for hotel and catering
services.
Mr. Altendorfer filed an action before the General Court seeking full revocation of the contested mark.
The General Court's decision
The General Court dismissed the appeal.
1. Statement of reasons (Art. 94(1) EUTMR)
Mr. Altendorfer raised two complaints concerning the BoA's reasoning.
a.
First, he argued that the BoA failed to explain why it admitted
late-filed evidence from Haus zur Hanse, including a decision from the
German Patent and Trade Mark Office partially rejecting his revocation
application against a parallel German mark.
The Court found that
the BoA had clearly stated that the evidence was prima facie relevant
and supplemented the evidence already on file, which satisfied the
requirements under Art. 95(2) EUTMR and Article 27(4) EUTMDR.
b. Second, Mr. Altendorfer complained that the BoA had not properly explained how the evidence established genuine use.
The
Court disagreed, emphasising that the duty to state reasons does not
require the BoA to address every argument raised by the parties
exhaustively. Further, even if the reasoning were erroneous, this would
concern the substantive correctness of the decision rather than the
BoA's obligation to state reasons.
2. Genuine use for services for providing food and drink
Mr.
Altendorfer's main challenge concerned the BoA's substantive assessment
of genuine use for providing food and drink, namely the nature and
geographical extent of use.
a. Nature of use
Mr.
Altendorfer argued that the mark had been used only as a company name
for Haus zur Hanse's restaurant but not as a trade mark.
The
Court recalled that while a company name does not inherently serve to
distinguish goods or services, it can function as a trade mark where a
connection is established between the sign and the services offered.
Haus zur Hanse had submitted evidence showing that it had been using the
name “OX” for a steakhouse in Braunschweig since 2010. The trade mark
was also used on the business papers, cutlery, clothing of the
restaurant's employees, Haus zur Hanse's website and in advertising.
This was not deemed to be use merely for the purpose of identifying a
company but also to designate the restaurant services.
b. Place of use
The applicant contended that use was limited to the city of Braunschweig and did not extend throughout the EU.
The
Court recalled consistent case law that genuine use need not occur on a
large part of the EU. Use in a single Member State can be sufficient.
The assessment of genuine use requires an overall assessment of all
relevant factors, of which the extent of the geographical use is only
one. Therefore, there is no abstract minimum geographical area in which
an EU trade mark must be used to constitute genuine use.
Further,
the Court distinguished between the place where services are rendered
and the place of use of a trade mark, noting that only the latter is
relevant for genuine use. Even purely local use can satisfy the genuine
use requirement where this is justified by the characteristics of the
relevant market.
Moreover, the offering of and advertising for goods and services has been found to constitute genuine use.
The
judges acknowledged that the restaurant was physically located in
Braunschweig but found that the place of use extended at least to
Germany and Austria. This finding was based on German-language online
advertising, slightly more than 2,000 Facebook followers, TripAdvisor
reviews in multiple languages, inclusion in a German-language guide of
the best hotels and restaurants in Germany and evidence that some guests
came from other EU countries.
c. Extent of use
Mr.
Altendorfer argued that any use was merely symbolic because it resulted
from passive tourism rather than active marketing efforts.
The
Court rejected this characterisation. The evidence showed seven-figure
annual turnover since 2015, corroborated by sample invoices and booking
system extracts. The judges also noted that a social media presence is a
relevant factor in the overall assessment of genuine use, as it
demonstrates efforts to reach consumers.
3. Genuine use for hotel services
The
BoA had examined genuine use for hotel services separately and reached
the same conclusion. Mr. Altendorfer simply stated that his arguments
regarding catering services applied mutatis mutandis to hotel services.
The Court held that this bare assertion was insufficient to challenge
the BoA's separate findings and dismissed the complaint accordingly.
Comment
This
is an important decision for local businesses like restaurants and
hotels that operate only a single establishment in the EU.
The General Court has held in Bice International v OHIM
(case T-624/14) that the use of an EU trade mark for a single
restaurant in Madrid (with a population of more than three million
people and a large number of tourists) is not sufficient to establish
genuine use, despite the restaurant having been mentioned in various
business magazines. The General Court argued that such articles do not
show that the trade mark under which the restaurant was operated had a
significant geographical reach.
In contrast, the Court deemed
the use of a trade mark for a restaurant in Braunschweig (with a
population of just over 250,000 people and a rather insignificant
tourism industry in comparison to Madrid) sufficient - not on its own
but in combination with:
- online advertising,
- Facebook followers,
- TripAdvisor reviews in multiple languages,
- inclusion in a German-language guide of the best hotels and restaurants in Germany and
- evidence that some guests came from other EU countries.
1. The number of Facebook (or other social media) followers mostly shows the success of an enterprise. However, success is not decisive but only use. Even unsuccessful trade marks deserve protection as long as their use is not merely symbolic.
The General Court did not explain why about 2,000 Facebook followers were relevant in the present case when it found in Kartroi v EUIPO (T-1/24) that a combined number of 5,000 Facebook followers and YouTube subscribers is too small a number to be relevant in the assessment of genuine use.
2. Similar considerations apply to TripAdvisor reviews and the restaurant guide. They measure success but not use. These reviews are not necessarily the result of use outside the restaurant in Braunschweig.
An internationally renowned restaurant is nothing more than successful and a successful company does not necessarily use its brand more than a lesser known or an unknown restaurant. Courts and trade mark offices should be careful not to conflate reputation with use.
3. Therefore, the only relevant question should be: Did the trade mark owner use the mark in a broader area? The most important type of evidence in this regard appears to be (online) advertising targeting not only consumers in the city of the restaurant, hotel etc. but a sufficiently large audience.
4. If the evidence is not sufficient to establish genuine use in a broader area and the EU trade mark is revoked as a consequence thereof, the owner may choose to convert the mark into a national trade mark according to Art. 139 EUTMR, provided that the evidence is sufficient to establish genuine use under national trade mark law (cf. Art. 139(2)(a) EUTMR).