If one trademark is registered in the EU but its business model happens in a country outside the EU, whether this mark is regarded as used on the territory of the EU.
This was the question the Board of Appeal of the EUIPO had to answer in the dispute R 1841/2021-5, OSCAR.
The case concerns the European trademark OSCAR registered for class 41 – entertainment and educational services, namely, conducting an annual award ceremony recognizing exceptional achievement in the film industry.
Against this mark, an application for revocation was filed based on non-commercial use for 5 consecutive years.
The EUIPO dismissed the action entirely. Although the well-known OSCAR Awards ceremony takes place at a venue in Los
Angeles, the EU trademark was subject to different advertisement campaigns that targeted EU consumers. Advertisements on their own constitute a way of trademark use according to EU legislation.
In addition, the trademark owner has provided licenses for broadcasting of the ceremony to many EU television programs which in turn means commercial use of the sign.
The Oscar Awards show was watched by millions of Europeans, and the ceremony itself represents an entertaining service.
The Board of Appeal confirmed this decision.
Last year the EUIPO issued another decision for a similar case relating to hotel services where the hotels themselves were outside the territory of the EU.