Decision on Cancellation No 13 990 C Page: 9 of 12
On this issue, the applicant notes that the proprietor’s documentation contains
indication of use only in relation to the city of Barcelona. In its view, such use is not
sufficient to demonstrate use of the EUTM in the relevant territory, since the relevant
market for the contested goods and services is not restricted to a single city, but it
extends to the territory of the entire EU. The applicant claims that the fact that the
EUTM proprietor operates its business exclusively in Barcelona shows that it does not
attempt to expand its activities in EU relevant territory. According to the applicant,
considering that Spain is one of the most popular tourist destinations in the European
Union, the evidence submitted by the proprietor is insufficient to show that that there
had been an intention or an attempt to seriously acquire a commercial position in the
In the case at hand, the entire EUTM proprietor’s evidence, namely the booklets, the
invoices and the written statements, shows that the place of use is ‘Barcelona’.
The question whether use of the mark in a single city is sufficient to prove genuine use
in the EU territory must be assessed in light of several factors, since the geographical
dimension of use of a trade mark is only one of the aspects to be considered.
As a general principle, it is apparent from the case law that the territorial borders of the
Member States should be disregarded in the assessment of ‘genuine use in the
[European Union]’ within the meaning of Article 18(1) EUTMR (19/12/2012, C-149/11,
Leno Merken, EU:C:2012:816, § 44). It is not necessary that the mark should be used
in an extensive geographic area for the use to be deemed genuine. It cannot be ruled
out that, in certain circumstances, the market for the goods or services for which an EU
trade mark has been registered is in fact restricted to the territory of a single Member
State. In such a case, use of the EU trade mark in that territory might satisfy the
condition for genuine use of an EU trade mark (02/02/2017, T-686/15, Cremcaffé by
Julius Meinl (fig.) / café crem (fig.), EU:T:2017:53, § 26 and 19/12/2012, C-149/11,
Leno Merken, EU:C:2012:816, § 50 and 54).
Use of an EUTM in a single Member State (15/07/2015, T-398/13, TVR ITALIA (fig.) /
TVR et al., EU:T:2015:503, § 57) or even in a single city may be geographically
sufficient (30/01/2015, T-278/13, Now, EU:T:2015:57). It is irrelevant in how many
Member States or cities a trade mark is used as long as the use may be considered
genuine use in the Internal Market of the European Union, being defined as a space
without borders, and namely the mark is used as a badge of trade origin for the
purpose of ‘maintaining’ or ‘creating’ market share, taking into account the ‘territorial
extent’ and the ‘scale’ ‘frequency’ and ‘regularity’ of use and the ‘characteristics’ of the
market concerned (02/07/2014, R 2100/2013-2, Vieta (fig.), § 27).
All the relevant facts and circumstances must be taken into account, including the
characteristics of the market concerned, the nature of the goods or services protected
by the trade mark and the territorial extent and scale of the use as well as its frequency
and regularity (19/12/2012, C-149/11, Leno Merken, EU:C:2012:816, § 58).
Therefore it is impossible to establish, in the abstract, what territorial scope should be
chosen in order to determine whether the use of the mark is genuine or not. A de
minimis rule, which would not allow the European Union judicature to appraise all the
circumstances of the dispute before it, cannot therefore be laid down (30/01/2015, T-
278/13, Now, EU:T:2015:57, § 47).
In this case, therefore, the Cancellation Division should take into account not only the
geographical area as such, but also the relevant market in which the proprietor
operates under the EUTM. In this regard, as seen above in the section dedicated on