Nike's lack of 'genuine use' is its downfall in CTM opposition

Nike's lack of 'genuine use' of its (already registered) Community Trade Mark (CTM) was pivotal in its latest dispute over its JUMP marks in the EU (we wrote recently about Nike's copyright dispute in the US over its Jumpman logo – see article dated 1 July).

Nike used its word and figurative CTM 'JUMP' as grounds to oppose the application by Turkish Company, Intermar, for the Benelux mark 'JUMPMAN'. Both marks related to shoes and socks. Intermar, possibly in a bid to sidestep the opposition, claimed, amongst other things, that Nike did not genuinely use its JUMP marks in the EU.

The consideration of genuine use of a CTM appears to apply on a pan-European level.  Nike was only able to provide evidence of its mark being used for shoes in Bulgaria and Ukraine; the evidence provided in relation to Bulgaria concerned the sale of around 24,000 pairs of shoes to one purchaser (over a period of five years – see below).

The Benelux Office of Intellectual Property concluded that Nike had not provided sufficient evidence to demonstrate genuine use within the EU. On this basis, Nike's opposition failed.

CTMs and Genuine Use

In general a CTM is a trademark which offers protection across the European Union as a whole, as opposed to protection on a national level in different member states. CTMs are considered in many circumstances to be simpler (less administration) and more cost-effective than protection on a national level in member states.

However, there are several grounds of revocation of an already-registered CTM. One of these grounds is that if there has been no genuine use of a mark, and there is no proper-reason for this, it will be revoked. Genuine use is assessed over a 5 year period (so to be subject to revocation there must have been a lack of genuine use over a continuous five year period). As demonstrated in the above example, genuine use is determined by law.