OPINION
Seasonal products and genuine trademark use in the EU
Chocolate enthusiasts will note that certain specialty chocolates are not available during the summer, creating anticipation for their return after the ‘silly season’. Meanwhile, summer often brings limited-edition products, such as those featuring tropical fruit flavours or refreshing combinations, introduced specifically for the season. Typical summer festivals also contribute to this wave of exclusive offerings. As the season shifts, some products and services exit the market while others return.
This limited availability can pose significant challenges for EU trademark holders. Maintaining adequate use of trademarks of products and services associated with specific times of the year is crucial. Companies must carefully manage their trademarks to ensure that, despite limited market presence during certain periods, their registrations remain secure and enforceable.
Legal framework
Registered EU trademarks can risk becoming unenforceable or even vulnerable to non-use cancellation if, within a period of five years following registration, the proprietor has not put the EU trademark to genuine use in the Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, without a proper reason (EUTMR, article 18).
CJEU case law and EUIPO guidelines
Genuine use of trademarks is not specifically defined by law, but Court of Justice of the European Union (CJEU) case law provides relevant interpretation.
CJEU clarified that genuine use must fulfil the trademark’s function of ensuring the origin of goods/services. Token use does not qualify. Factors to consider include economic necessity, market characteristics, and frequency of use.
In this context, the European Union Intellectual Property Office (EUIPO) guidelines refer to relevant case law (Minimax, 2003, C-40/01), stating that genuine use requires actual use of the mark, not merely token use, and must align with the essential function of a trademark—specifically, distinguishing the origin of products or services in the market.
Furthermore, referencing the case Laboratoire de la Mer (2004, C-259/02), the guidelines emphasise that genuine use must be assessed on a case-by-case basis, considering various factors, and that there is no minimum threshold for determining genuine use.
In this case-by-case context, factors such as place of use, the nature of the goods, market characteristics, and the scale and frequency of use are relevant.
Seasonal trademarks and extent of use
For trademarks of seasonal or periodical goods and services, the criteria of ‘extent of use’ is of particular concern. The EUIPO guidelines provide that “In this regard, it has to be evaluated whether, in view of the market situation in the particular industry or trade concerned, it can be deduced from the material submitted that the owner has seriously tried to acquire a commercial position in the relevant market.”
The assessment of the extent of use considers several criteria, such as commercial volume (total sales under the trademark) and duration and frequency of use. There is an interdependence between these factors: a low commercial volume can be offset by frequent and extensive use, and vice versa.
There is not a de minimis rule, for example there is no requirement as to the number of relevant consumers.
Regarding the evidence to be presented, while direct evidence (eg invoices) is important, circumstantial evidence (eg catalogues) can also be considered, especially in markets with small commercial volumes, to clarify the overall assessment.
Particularly relevant to the issue of seasonality, is that it is expressly recognised in the EUIPO guidelines, with reference to relevant case law, that there is no need for continuous use during the relevant five-year period. Use may be sufficient, even if it is not continuous, as long as it is authentic (Deitech, T-86/07).
Also important is the acknowledgement that the relationship between the volume of sales under the trademark and the trademark owner total turnover may vary depending on the diversification of activities in the market (the proof of use examination does not assess the holder’s commercial strategy). Even if the products represent a minimal share of turnover, it may still be economically justifiable to market them.
Special market conditions can be met, such as lower sales volumes in the initial product launch phase, but it is safeguarded that this cannot be eternalised.
Good practices for seasonal trademarks
In this context, for seasonal or periodic products, maintaining a seasonal continuity of use is relevant. While there may not be use year-round, a seasonal pattern of use can align with the product’s inherent characteristics.
Accordingly, as far as seasonal goods and services are concerned, it is prudent to correctly contextualise the use of the trademark, to try to mitigate the vulnerability of the use being considered insufficient:
Maintain the trademark communication (eg keeping the trademarked good/ service visible on the website, or social media);
Indicate the periods of availability of the products or services, or the frequency of events;
Identify the seasonal nature of the product (eg, chocolate pralines—not available in summer, to ensure quality)
It is also important to emphasise the significance of correct trademark use and the maintenance of accurate documentation:
Use the trademark as registered, for the identified goods or services
Keep records of sales, correctly identifying the trademark on invoices
Keep records of exports (use in exports from the EU is relevant—eg in off-season periods there may be relevant exports to other territories)
Keep an archive of marketing materials, publications
Keep contracts/distribution agreements to prove use of the trademark by an authorised third party. Register licence agreements
EU trademark registration grants exclusive rights, and maintaining this monopoly may require proof of serious use. This assessment should be conducted on a case-by-case basis to reflect market realities. While the use of trademarks for seasonal products or periodic events can be considered serious, it will always require thorough analysis, in particular considering the extent of use. Therefore, special care is needed both in the use of the trademark and in selecting evidence to demonstrate that use.
This is a co-published article, which was originally published in the World Intellectual Property Review (WIPR).
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