The trademark protection system assumes that only those trademarks that are genuinely used are protected. If a trademark has not been used for a period of 5 years from the date of registration, any interested party has the right to file an application for revocation. The case facts in revocation proceedings are often complicated, and the following issues in particular raise special concerns:

• extent of use of the trademark – the evidence must show that the use of the mark was not purely token;
• the form of the mark used – the evidence should confirm that the used mark is identical to the registered form or differs only in elements that do not alter its distinctive character;
• the scope of use – the mark must be used in relation to the goods and services for which it was registered.

On the 19th of March 2025, the CJEU issued a judgement in case T-1075/23, which concerned all three of the above-mentioned issues. An important aspect of this case was the fact that the trademark had been registered for a broad category of services, but was used in a much narrower scope.

Existing case law

In the CJEU judgement of the 14th of July 2005 (case T 126/03), it was stated that if a trademark has been registered for a category of goods or services that is so broad that it is possible to determine several independent subcategories, evidence of genuine use in relation to one of these subcategories results in protection only for this specific group of goods or services. The CJEU adopted a similar position in its judgement of the 15th of December 2010 (case T 132/09). However, not every category can be divided into separate subcategories. An example is the decision of the EUIPO Board of Appeal of the 19th of June 2007 in case R 378/2006-2 concerning the TURBO mark (EUTM 000222661) registered in class 25 for „clothing”. The proprietor presented evidence of use of the trademark for swimwear, T-shirts, Bermuda shorts, cycling shorts and underwear. The Board held that it would be practically impossible to impose an obligation to prove use in all possible subcategories. The decision also implies that evidence relating solely to swimwear would not be sufficient to prove use of the mark for the entire category of ‘clothing’.

Facts of the case T-1075/23

Dialoga Servicios Interactivos, SA is the entitled to the figurative trademark (EUTM 008917155) registered for 'telecommunications services’ in class 38 of the Nice Classification. e-dialog GmbH filed an application for revocation of this trademark in relation to the aforementioned services. In the first instance, the EUIPO Cancellation Division dismissed the application, and the Board of Appeal subsequently upheld this decision, arguing that the evidence presented showed that the trademark had indeed been used in the last 5 years in relation to telecommunications services. The proprietor submitted 19 invoices issued between 2012 and 2021, extracts from the Spanish newspaper Expansión from 2020 and the Spanish newspaper Seguritecnia from 2019, including advertisements; excerpts from its website, including articles with illustrations relating to its presence at various trade fairs. The evidence related to the use of the trademark for audio and video communication services (i.a. SMS, fax2mail, making and receiving calls, voice messages, video conferencing and WebRTC).

E-dialog GmbH filed an appeal, in which it made the following claims:

• the EUIPO Board of Appeal incorrectly assessed the evidence because, given the significant size of the telecommunications services market, the evidence indicated only token use of the trademark;
• the disputed trademark was used in a different form to the registered form as it was used as an identifying element of the domain name ‘dialo.ga’;
• the fact that the sign was only used to a limited extent for audio and video communication services (i.a. SMS, fax2mail, making and receiving calls, voice messages, video conferencing and WebRTC) was not sufficient to demonstrate genuine use for the broadly defined category of ‘telecommunications services’, which also includes radio and television broadcasting services.

CJEU judgement

The CJEU did not agree with the applicant’s first two arguments. The CJEU stated that the EUIPO Board of Appeal was correct in its assessment that the mark had been used with sufficient intensity. The proprietor had not only submitted invoices confirming use, but also extracts from Spanish newspapers and advertisements featuring the disputed mark. In addition, the CJEU emphasised that the use of a trademark in a modified form, differing only in elements that do not alter its distinctive character, should be considered as use in accordance with Article 18(1)(a) of Regulation 2017/1001. The added dot was considered an insignificant element that did not affect the distinctive character of the trademark.

However, the CJEU upheld the applicant’s third argument. It stated that a trademark cannot enjoy broad protection solely on the basis of registration for a broad category of goods or services. In cases where the category can be divided into several independent subcategories, the proprietor must provide evidence of genuine use for each of them. Otherwise, the trade mark will be revoked in respect of those subcategories for which there is no evidence of use. The CJEU emphasised that, in practice, it is very difficult to prove that the trade mark has been used for all the varieties of goods and services covered by the registration. The concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories.

The CJEU also noted that even the submission of evidence of use relating to a wide and varied range of services does not justify a presumption of use for the entire category of ‘telecommunications services’. Such an argument would undermine the need to distinguish subcategories of goods and services, resulting in overly broad protection for a trademark that is partially used.

Summary

The evolving case law confirms that registration of a trademark for a broadly defined category of goods and services does not guarantee extended protection if the trademark is genuinely used in a narrower scope. The CJEU emphasised once again that the proprietor of the trademark registered for a broad category of goods or services must provide evidence of use for each subcategory, as otherwise it may lose protection for those subcategories for which it has not provided evidence of use.