Decadenza per non uso: conta l’uso anche pubblicitario in UE, pur se relativo a servizi offerti non in UE ma solo extraUE

Così si può sintetizzare l’insegnamento di  Trib. UE del 13.07.2022, T‑768/20, Standard International Management  c. EUIPO e Asia Standard Management,  sul sempre un pò scivoloso tema della individuazione degli usi che salvano dalla decadenza.

Norma azionata : art. 58.1.a del reg. ue 1001 del 2017.

Il marchio:

per servizi alberghiero-turistici , abbigliamento etc.

Il board di appello aveva deciso: <<10   In the first place, as regards the place of use of the contested mark, the Board of Appeal pointed out that a considerable amount of evidence concerned hotel services and ancillary services provided by the applicant in the United States. Among that evidence, the Board of Appeal noted various documents referring to advertisements, promotional campaigns aimed at customers located in the European Union, reservations made directly by customers and through travel agencies situated in the European Union, invoices addressed to customers resident in the European Union, a bookings portal accessible to European Union customers via the applicant’s website, figures issued by Google Analytics software concerning traffic on the applicant’s website, as well as printouts from such a website referring to various hotel services and equipment offered and used by customers, particularly in the European Union, or even articles focusing on awards and on prizes received. The Board of Appeal, in that regard, considered that such evidence was insufficient for a finding that the contested mark had been put to use in the European Union, given that the hotel and ancillary services in question were rendered outside the relevant territory of the European Union. It considered that the nationality or geographical origin of the customers was, in that regard, irrelevant, as also was the fact that the advertisements or the offers of service were intended for consumers in the European Union>>.

Ma il T. riforma:

<<As is apparent from the case-law referred to in paragraph 31 above, it is sufficient to state that there is genuine use of a trade mark where that mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods and services for which it has been registered, in order to create or preserve an outlet for those goods or services. Even if the applicant were to supply goods or services outside the European Union, it is conceivable that the applicant would make use of that mark in order to create or preserve an outlet for those goods and services in the European Union.

39      Moreover, such an interpretation is supported by EUIPO guidelines. Those state that, where the goods or services covered by the contested mark are provided abroad, such as holiday accommodation or particular products, advertising alone may be sufficient to amount to genuine use (EUIPO Guidelines for examination of European Union trade marks, Part C Opposition, Section 6 Proof of use, paragraph (use in advertising)).>>

Inoltre conta anche il puro uso pubbliciario e in matreriali di viatggio (v. dettagli al § 10 sopra riporatao)=, pur se i serivzi di questo tipo non sonreetistrati.

<<42   In that regard, it is sufficient to note that it follows from paragraph 35 above that advertisements and offers for sale constitute acts of use of a trade mark. Therefore, those are relevant in order to demonstrate use in respect of the services or goods for which the contested mark is registered, in so far as those services or goods are the subject of advertisements and offers for sale.

43      In the present case, it is common ground that the evidence adduced by the applicant is intended to demonstrate use of the contested mark for the services for which it was registered, namely hotel and ancillary services, in particular by means of advertisements and offers for sale.

44      Therefore, the Board of Appeal’s assessment set out in paragraph 41 above is clearly incorrect.

45      Thus it must be held that none of the grounds contained in the contested decision support the conclusion that the evidence of genuine use of the contested mark referring to advertisements and offers for sale of the applicant’s hotel and ancillary services in the United States and targeted at consumers in the European Union is excluded.>>