Owners of the ‘GOLD MOUNT’ mark failed to demonstrate any real commercial use of the mark, ultimately resulting in its revocation.

Under the Trade Marks Act 1994 and related EU trade mark regulations, a registered trade mark may be revoked if there is no genuine use of that mark for five years or more. Genuine use in this context is ‘real commercial exploitation of the mark on the given market’.

The case of Kaane American International Tobacco Company FZE v EUPO concerned the Kaane’s figurative ‘GOLD MOUNT’ trade mark, which consisted of the words ‘GOLD MOUNT’ and an image of a mountain. Kaane had appealed against the European Union Intellectual Property Office's (EUIPO) decision to revoke this mark. Unfortunately for Kaane, the EU General Court upheld EUIPO’s decision and dismissed the tobacco company’s appeal. This decision was based on the court’s view that Kaane had failed to provide evidence of genuine use of the mark during a continuous period of 5 years.

The company had argued that they’d used the ‘GOLD MOUNT’ mark in several international tobacco industry trade fairs. However, the court decided that this was insufficient, as the company attended these fairs under the company name Kaane - and did not use the dominant element of the trade mark: the mountain. The tobacco company had therefore failed to provide evidence of use of the mark as it was registered.

The case is an important reminder for trade mark holders that they should ensure they put their trade marks into use in the form that they’re registered. They also need to keep track of the relevant registration and renewal dates to minimise the risk of marks being revoked in future. Trade mark owners should carefully document the use of trade marks to ensure they have evidence, if ever questioned about non-use in legal proceedings. As illustrated by this case, a lack of awareness of legal requirements by companies can lead to high litigation costs when fighting a third party’s revocation application.

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For more information, please contact Nicholas de Figueiredo.