Unregistered mark EASJOY cannot block EU trademark registration

Sometimes a business has been using a brand name for years without formally registering it.

That may work fine until someone else applies to register the same mark. That is exactly what happened in a recent case involving the mark EASJOY.

A Chinese manufacturer had been selling karaoke equipment and microphones under that name since 2017, including through Amazon in several European countries. When a German entrepreneur applied to register the word mark EASJOY as an EU trademark, the manufacturer tried to oppose the application by relying on an earlier, unregistered right in the name. In the end, that attempt was unsuccessful.

In some situations it is possible to rely on such an unregistered right and even invoke it against an EU trademark application. However, clear conditions apply. There must be national legislation that allows a party to rely on such local rights. In addition, the sign must have been used in the course of trade before the later trademark application and the use must be more than merely local. In other words, the sign must have a real and recognisable presence in the market.

When assessing this, factors such as the duration and intensity of use are taken into account, as well as the volume of sales, the places where the goods are sold and the amount of advertising carried out under the sign.

In this case, that is where things went wrong. Although invoices, sales orders and screenshots of product pages were submitted, the European Union Trademarks Office considered this insufficient to demonstrate that the mark had built up a clear market position. Sales volumes appeared limited and the evidence did not provide a clear picture of the scale of use or the reputation of the mark. As a result, it was not proven that a sufficiently strong trademark right had arisen through use alone.

The takeaway is straightforward. Relying on an unregistered trademark right is risky. Gathering convincing evidence can be difficult and the threshold is high. A timely trademark registration helps avoid these discussions. As is often the case in trademark law, prevention is better than cure.

Author: Arnaud Bos

Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.