Our client is an internationally successful artist and music composer who has been respected worldwide for many years. To obtain trademark protection for the invented word “Freakency”, we filed an application with the European Union Intellectual Property Office (EUIPO) for this term as a European Union word mark for goods and services in classes 3, 9, 14, 16, 25, and 41.
The City of Dresden filed an opposition against this trademark application with the EUIPO based on its German word/figurative mark “freak quency” (registration number: 304255408), which is protected for goods and services in classes 25, 35, and 41. The City of Dresden argued that its German trademark and its goods and services protected therewith were confusingly similar to our client’s trademark application and the goods and services protected therewith.
The EUIPO rejected the opposition of the state capital Dresden in its entirety and awarded our client reimbursement of its costs. In these opposition proceedings, we had argued that the state capital Dresden did not make sufficient use of its German word/figurative mark concerning the goods and services registered for it.
The German word/figurative mark of the City of Dresden was already outside the five-year grace period for use, so the City of Dresden had to prove sufficient use of its mark. Trademarks that are not sufficiently used are ready for cancellation and are not a suitable basis in opposition proceedings under trademark law. The state capital Dresden was not able to meet the burden of proof of sufficient use so that its opposition was rejected for this reason alone. The EUIPO therefore did not even need to clarify the question of whether the signs in dispute are confusingly similar.