Recently, a Belgian household chain store discovered the downside of having a European Trade Mark registration (EUTM). The EUIPO has declared the figurative mark “CASA” invalid due to lack of distinctiveness. The Belgian company ‘Casa International N.V.’ (‘Casa Int.’), which registered the contested mark in 2003, sells small household goods in more than 500 shops spread over 11 European countries. The first use of the trademark goes back to 1975. Last year, a Dutch company ‘Interstyle BV’ filed a declaration of invalidity.
It was up to Casa Int. to demonstrate that its EUTM had acquired distinctive character in the part of the European Union where the absolute ground for refusal arose, namely in Italy, Spain and Portugal. The relevant public was limited to these three countries since the Italian, Spanish and Portuguese word ‘casa’ literally means house or home.
The Cancellation Division concluded that Casa Int. failed to demonstrate the acquired distinctiveness of the mark among relevant consumers in the relevant territories. As a result, the contested trademark was invalidated in all EU member states.
This case reminds us once again of the importance of having a strategic approach regarding trademark registrations. Casa Int. has been using the mark ‘CASA’ since 1975. However, due to lack of qualitative evidence, it could not prevent the cancellation of the EUTM based on distinctive character acquired through use. The EUTM cuts both ways. On the one hand, it offers an enormous luxury whereby one registration offers an EU-wide protection. On the other hand, one claim, in any of the EU member states, is enough to threaten the entire registration. We therefore recommend making use of the existing complementary trademark system, which allows a company to register the same trademark on both a national and on an EU level. Luckily, for Casa Int., it also owns a Benelux trademark since 2003.
Link to decision EUIPO 8 May 2020, 34 124 C (Interstyle against Casa International)
Recently, a Belgian household chain store discovered the downside of having a European Trade Mark registration (EUTM). The EUIPO has declared the figurative mark “CASA” invalid due to lack of distinctiveness. The Belgian company ‘Casa International N.V.’ (‘Casa Int.’), which registered the contested mark in 2003, sells small household goods in more than 500 shops spread over 11 European countries. The first use of the trademark goes back to 1975. Last year, a Dutch company ‘Interstyle BV’ filed a declaration of invalidity.
It was up to Casa Int. to demonstrate that its EUTM had acquired distinctive character in the part of the European Union where the absolute ground for refusal arose, namely in Italy, Spain and Portugal. The relevant public was limited to these three countries since the Italian, Spanish and Portuguese word ‘casa’ literally means house or home.
The Cancellation Division concluded that Casa Int. failed to demonstrate the acquired distinctiveness of the mark among relevant consumers in the relevant territories. As a result, the contested trademark was invalidated in all EU member states.
This case reminds us once again of the importance of having a strategic approach regarding trademark registrations. Casa Int. has been using the mark ‘CASA’ since 1975. However, due to lack of qualitative evidence, it could not prevent the cancellation of the EUTM based on distinctive character acquired through use. The EUTM cuts both ways. On the one hand, it offers an enormous luxury whereby one registration offers an EU-wide protection. On the other hand, one claim, in any of the EU member states, is enough to threaten the entire registration. We therefore recommend making use of the existing complementary trademark system, which allows a company to register the same trademark on both a national and on an EU level. Luckily, for Casa Int., it also owns a Benelux trademark since 2003.
Link to decision EUIPO 8 May 2020, 34 124 C (Interstyle against Casa International)