EU trade mark dispute: e.plus

On October 16, the General Court of the European Union ruled in cases T‑604/23 and T‑570/23, related to a dispute over the revocation of the European Union trade mark “e.plus”.

In April 2021, the US company ePlus Inc. filed an application with the European Union Intellectual Property Office (EUIPO) for the revocation of the e.plus trade mark, registered under the number 001132299 and owned by Telefónica Germany GmbH & Co, who claimed the seniority of the German trade mark No 398151725. ePlus stated that there was no genuine use of the mark in respect of several goods and services in Classes 9 and 38 of the Nice Classification, including devices for recording, transmitting or reproducing sound and images, network cables, telecommunications services and mobile networks.

The Cancellation Division of the EUIPO partially revoked the trade mark, maintaining it only for SIM cards (class 9) and services related to mobile telephony and the operation of mobile networks (class 38). Both ePlus Inc. and Telefónica Germany appealed against this decision. The EUIPO Board of Appeal partially overturned the decision, stating that genuine use of the mark in Germany had been proven for mobile telephony services, internet service providers, the operation of mobile networks and messaging services. However, it considered that genuine use had not been proved for other telecommunications services not related to mobile networks and therefore dismissed part of Telefónica's appeal and ePlus Inc.'s appeal in its entirety.

Once again, both Telefónica Germany and ePlus Inc. appealed that decision to the General Court of the European Union, which had to determine whether the mark had been genuinely used.

The General Court noted that the Board of Appeal had correctly assessed the evidence submitted, including invoices, website extracts, sworn statements and advertisements, which demonstrated genuine use of the mark in relation to mobile telephony services and the operation of mobile networks during the relevant period (from 12 April 2016 to 11 April 2021 – the 5 years preceding the revocation proceeding initiated by ePlus). In addition, the Court pointed out that the sworn statements showed that SIM cards and prepaid cards sold under the mark had generated significant sales volumes. It also highlighted that the catalogues and advertisements showed how the trade mark was associated with offers enabling customers to access the Internet, thus also proving the use of the trade mark for the services of ISPs and the operation of ISP networks. 

Telefónica on the other hand argued that the Board of Appeal should not have partially revoked the e.plus trade mark in relation to certain services in Class 38, as all services in this class are so interlinked as to be undividable unless done so along an arbitrary line. The Court also refused this argument, as “telecommunications” in this Class consist of a large number of services which can indeed be divided into subcategories, such as telephone messaging services on one side, and ISP services on the other. As such, it stated that the Board of Appeal had not acted arbitrarily and upheld its decision

Therefore, the General Court upheld the decision of the EUIPO and recognised the genuine use of the e.plus trade mark for only parts of the services in question.