Genuine use of a trade mark during the COVID-19 pandemic

Non-use of a trade mark during the COVID-19 pandemic may constitute grounds for cancellation of the trade mark due to non-use. This was decided by the Regional Court Munich I (LG München I). What requirements must be met for genuine use of the trade mark?

An operator of a Munich brewery with a gastropub took action against a competitor because the competitor was not making genuine use of his registered word mark "Schützenlisl" and the corresponding figurative mark – a barmaid balancing on a beer barrel – was not making genuine use thereof.

The competitor defended himself, inter alia, by stating that he had been prevented from using his trade mark due to the COVID-19 pandemic. He therefore argued that there were legitimate reasons for his non-use.

No genuine use

The Regional Court Munich I (LG München I) (Endurteil vom 25.02.2022 – 33 O 8225/21) sided with the brewery operator and declared both trade marks to be revoked.

Genuine use requires that the trade mark has been used in earnest for the goods or services for which it is registered within the territory of the Member State. The trade mark must thus be used in the usual and economically meaningful manner for the goods or service. An exception applies if "there are legitimate reasons for non-use".

The defendant was of the opinion that the lockdowns during the COVID-19 pandemic constituted insurmountable obstacles for restaurateurs. The court rejected this view:

There were already no indications to show that the COVID-19 pandemic was causally responsible for the non-use of the trade marks. Although the defendant applied for a stall at Oktoberfest in accordance with its concept, since there is doubt as to whether the defendant would have been successful with its admission application, the COVID-19 pandemic was not causally responsible for the non-use of the trade marks.

Conclusion

The decision of the Regional Court Munich I (LG München I) is worthy of approval. Restaurateurs are advised to use their trade marks as comprehensively as possible for their services even during the pandemic. Since cancellation of a trade mark only occurs if it has not been used within a period of five years, the situation of restaurateurs due to the COVID-19 pandemic and the associated restrictions is generally not dramatic. Nevertheless, the situation requires the attention of businesses affected by lockdowns, particularly restaurateurs, as the decision of the Regional Court Munich I demonstrates.