Defence validity in the event of trademark infringement: how does that work?

A brand or trademark can be registered with the European Union’s Bureau for Intellectual Property (EUIPO). The brand-holder then enjoys protection in all member states of the EU in a single go. But the holder of a brand must indeed “maintain” his brand; otherwise his rights may lapse under certain circumstances. In recent summary proceedings, the judge was presented – literally – with a head-scratcher: he had to assess whether the brand name for a type of hair extension product was indeed still valid. Trademark law attorney Hidde Reitsma explains the defendant’s claim of validity.

Validity defence: trademark rights actually still valid?

The plaintiff sells hair extensions under the brand name “Flip-In Hair”. The plaintiff also registered this trademark with the EUIPO. The defendant also trades in hair extensions and uses such designations as “Flip-In” and “Flip-In Hair” for this. The plaintiff initiates summary proceedings, stating that the defendant infringes upon its trademark rights. The defendant disputes that plaintiff can make a claim based on its brands, because its trademark rights are no longer valid. The defendant bases this validity defence on article 51 of the Community Trademark Regulation.

Lapse of a community trademark

According to article 51, a third party can lodge a claim with the EUIPO that the rights of a holder to a community trademark be declared as having lapsed under the following circumstances:
1. If the brand is not used normally for the goods or services in the Community for the purposes for which they are registered for an uninterrupted period of five years and there is no valid reason for the disuse;
2. If the brand has become the customary name of a good or service for which it is registered by means of actions or omissions on the part of the brand-holder;
3. If the brand-holder’s use of the brand for the goods or services for which it is registered, or his permission for such use, can mislead the public – particularly about the type, quality or lease of origin of these goods or services.

1) Brand name has become customary name?

So the success of the validity defence requires that the brands have become customary designations in the trade for this type of hair extensions. The court is of the opinion that this is the case. The defendant referred with success to various (European) websites on which such designations as “Flip In extensions”, “Flip extensions”, “flip-in hair” and “Flipp-on” are used.

2) Brand-holder’s acts or omissions

A second requirement for the success of the validity defence is that the brand has become the customary designation by means of the brand-holder’s acts or omissions. In the preliminary opinion of the appeals court, the existence of this has not been made plausible. The documents show that plaintiff has acted in a manner involving sufficient enforcement against third parties using its brand. Among other acts, it summoned websites such as eBay and Amazon not to sell infringing brands and it took other enforcement measures to counter or to stop trademark infringement.

Lawyer for trademark infringement cases

The plaintiff’s brand remains unabatedly valid. The defendant therefore acts unlawfully by trading in this brand without permission. The court therefore ordered that this use be ceased as quickly as possible! Have you encountered infringement of your trademark rights by another enterprise? Or do you yourself use a brand and are unsure whether this is permitted? AMS Advocaten has considerable experience with disputes concerning intellectual property rights.