The European Union Intellectual Property Office ("EUIPO") revoked the EU word trade mark "Anne Frank" in a decision dated 7 December 2018. EUIPO ruled that the Anne Frank Stichting had not made genuine use of the trade mark in the European Union in the preceding five years.
The Anne Frank Stichting had registered the word trade mark "Anne Frank" in the European Union on 22 December 1999 for printed matter (Nice Class 16), education (Class 41) and providing of social and political information (Class 42).
The Anne Frank Fonds filed a request with the EUIPO for revocation of the EU trade mark "Anne Frank" on the grounds of lack of genuine use of the trade mark in the European Union during a continuous period of five years for the goods and services in respect of which it was registered (Article 58(1)(a) of the European Union Trade Mark Regulation – "EUTMR").
The proprietor of a trade mark must prove the genuine use of the trade mark or proper reasons for its non-use. According to EUIPO, genuine use of a trade mark exists where the trade mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create an outlet for the goods or services concerned.
The Anne Frank Stichting invoked several elements to illustrate genuine use of the trade mark "Anne Frank". It referred, among other things, to the publication "Fifty questions on Antisemitism" in which the Anne Frank House was mentioned as the author. The Anne Frank Stichting also submitted copies of the magazine "Anne Frank Krant", the "Anne Frank Journal" published by the Anne Frank House, and flyers and brochures printed by the Anne Frank Zentrum to promote exhibitions, books and DVDs, etc.
EUIPO ruled that the use of the name "Anne Frank" on the DVDs and books, for example, did not constitute use as a trade mark. According to EUIPO, consumers will perceive the name "Anne Frank" in this context as a mere indication or illustration of the content of the materials that are built around the story of Anne Frank.
However, EUIPO considered that the indication of "Anne Frank House" or "Anne Frank Zentrum" as the organiser of exhibitions or operating a museum, or as the publisher of publications can be considered as use of the trade mark "Anne Frank" as a trade mark.
According to Article 18(1) EUTMR, the use of a trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered constitutes genuine use of the trade mark.
The question arose during the revocation proceedings as to whether the use of the terms "Anne Frank House" and "Anne Frank Zentrum" altered the distinctive character of the registered trade mark "Anne Frank". The Anne Frank Stichting argued that the words "House" and "Zentrum" were not distinctive and that the addition of these words did not alter the distinctive character of the trade mark "Anne Frank".
EUIPO held, however, that there is a clear difference between "Anne Frank" on the one hand and "Anne Frank House", "Anne Frank Zentrum" and "Anne Frank Stichting" on the other. The registered trade mark "Anne Frank" is a name of a person and refers to a particular individual. The terms "Anne Frank House", "Anne Frank Zentrum" and "Anne Frank Stichting" refer to institutions. These terms are not distinctive in themselves, but they change the overall meaning of the whole expression if they are added to the name of a person. According to EUIPO, the same reasoning applies to the names of the magazines and journals "Anne Frank Krant", "Anne Frank Journal" and "Anne Frank Zeitung". The use of these terms does not therefore constitute a normal use of the trade mark "Anne Frank".
EUIPO therefore ruled that the Anne Frank Stichting had not succeeded in proving genuine use of the trade mark "Anne Frank" for all of the goods or services for which it was registered. Therefore, EUIPO revoked the Union trade mark "Anne Frank" with effect from 16 December 2014 for all goods and services for which the trade mark was registered.
The decision of EUIPO to revoke the trade mark "Anne Frank" illustrates once again the importance of timely and genuine use of a trade mark "as a trade mark", namely to distinguish the origin of the goods and services for which the trade mark is registered. This should serve as a warning to all proprietors of trade marks.
