CA-2024-00277 - [2025] EWCA Civ 1000

Neither side took issue with the accuracy of the following passage from my judgment in easyGroup Ltd v Nuclei Ltd [2023] EWCA Civ 1247, [2024] FSR 9 which the judge cited at [130]:

“106.

Ignoring issues which do not arise in the present case, such as use in relation to spare parts or second hand goods and use in relation to a sub-category of goods or services, the principles may be summarised as follows:

(1)

Genuine use means actual use of the trade mark by the proprietor or by a third party with authority to use the mark ...

(2)

The use must be more than merely token, that is to say, serving solely to preserve the rights conferred by the registration of the mark ...

(3)

The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user by enabling him to distinguish the goods or services from others which have another origin ...

(4)

Use of the mark must relate to goods or services which are already marketed or which are about to be marketed and for which preparations to secure customers are underway, particularly in the form of advertising campaigns ... Internal use by the proprietor does not suffice ... Nor does the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter ... But use by a non-profit making association can constitute genuine use ...

(5)

The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, that is to say, use in accordance with the commercial raison d'être of the mark, which is to create or preserve an outlet for the goods or services that bear the mark ...

(6)

All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark ...

(7)

Use of the mark need not always be quantitatively significant for it to be deemed genuine. Even minimal use may qualify as genuine use if it is deemed to be justified in the economic sector concerned for the purpose of creating or preserving market share for the relevant goods or services ...

(8)

It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use ...

107.

The trade mark proprietor bears the burden of proving genuine use of its trade mark …. The General Court of the European Union has repeatedly held that genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned ...”