Can an EU trademark for hotel services be valid even in case the hotels are outside the Union?

The Board of Appeal of the EUIPO has ruled in an interesting dispute R 1264/2020-1 between Kerzner International Limited and BINTER CARGO, S.L.

This case concerns trademark ATLANTIS registered in 2008 for classes 16, 28, 36, 41, 43 и 44. In short the goods and services are related to tourist agencies and hotel accommodation.

In 2018 an application for revocation was filed by BINTER CARGO for non-use of the mark. After examining the submitted evidence for trademark use, the EUIPO decided for revocation of the mark for all goods and services with exception of arranging accommodation in tourist centers; travel agency services for hotel reservations; accommodation reservations and restaurant bookings in class 43.

According to the Cancelation Division there is no genuine use of the mark for restaurant and hotel services in case where EU consumers have to go outside the Union in order to benefit from them. In the case at hand the trademark owner offer hotel survives under the mark in Dubai and Bahamas.

This decision was appealed.

The Board of Appeal disagreed with Cancelation Division’s approach to the issue and annulled this decision for the services in class 43.

According to the Board, what is important in this case is not the place where services are supplied, but the place where the trademark is used for those services. That is to say where the trademark owner offers these survives pursuing a market share with the registered mark. What’s more advertisement and marketing activities with the mark on the territory of the EU is considered a type of trademark use too.

The Board confirmed the decision for rest of the goods in the application because although they could be offered by the trademark owner in its hotels there were no evidence that the EU consumers purchased them.

Source: D Young & Co LLP – Agnieszka Stephenson for Lexology.