Delta Air Lines, Inc (“the Registrant”) recently defeated a revocation action filed against their EUTM no 8149941 for DELTA SKY CLUB (“the Contested Mark”) by Ontro Limited.

Ontro Limited (“the Applicant”) filed a declaration of revocation against the Contested Mark on 12 June 2020 against all services in class 39 based on Article 58(1)(a) of the EUTMR, meaning they claimed that the Contested Mark had not been genuinely used for a continuous period of five years for the services in class 39.  Those services are “Air transportation services featuring transit lounge facilities for passenger relaxation”.

On 14 December 2022, the Cancellation Division at the EUIPO partially revoked the Contested Mark, removing “air transportation services” in class 39, but allowing “transit lounge facilities for passenger relaxation” in class 39.

This decision was appealed by Ontro Limited on 13 February 2023 as they claimed the evidence submitted by the Registrant was mostly undated and irrelevant, and consequently the Registrant had failed to show use of the Contested Mark in the EU for the services registered in class 37.  The Applicant contended that the evidence; 

1. largely referenced the US, which was not the relevant jurisdiction;
2. did not show the evidence was from the relevant time period, as it was mainly undated, or the date was ambiguous; and
3. did not show that the lounge facilities helped the consumer de-stress or reduce tension, meaning the Contested Mark was not being used for the services as registered (“for passenger relaxation”)

The Appeal was dismissed by the Fourth Board of Appeal on the 15 August 2023.  The decision looked at all the factors relating to genuine use and how the evidence submitted by the Registrant adhered to those factors.

1. Time of use

The relevant period was 12 June 2015 to 11 June 2020.  The Fourth Board of Appeal noted that, although many of the documents were not dated during relevant period, overall much of the evidence was.  As evidence must be looked at overall, and not on an individual basis, the time of use of the Contested Mark was sufficiently proven.

2. Place of Use

Although the evidence shows that the services were offered to Delta Sky Club members in the US, the evidence also showed that the services were offered to EU consumers who have access to DELTA SKY CLUB lounges and partner lounges in the EU.  As well as this, the evidence showed that the lounges were advertised in the EU, for example, at events in Milan, at press conferences with Italian newspapers, through advertisements relating to flights from Dublin and the UK, through advertisements in EU languages, through lounges being accessible in Amsterdam and Paris, and partnerships with different airlines in the EU. Through this evidence, the Fourth Board of Appeal found that place of use was sufficiently proven even though the lounges themselves were not offered in the EU.

3. Extent of use

To show the extent of the use, the Fourth Board of Appeal noted that you have to consider; (1) the commercial volume of all the acts of use; (2) the duration of the period in which the acts occur; and (3) the frequency of those acts. They stated that the evidence showed that the Contested Mark had been on the market in a way that is effective, consistent over time and stable, meaning that the extent of use was also proven.

4. Nature of use

Lastly, for genuine use to be found of the Contested Mark, three elements of the nature of use needed to be shown.  Namely; (a) that there has been use of the Contested mark in the course of trade; (b) that this use was of the Contested Mark; and (c) use of the Contested Mark was for the goods and services as registered.  The Applicant argued that there was no use of the Contested Mark, while there were variations, these variations did not sufficiently show use of the Contested Mark, and certainly not for the goods and services registered.  However, the Fourth Board of Appeal disagreed. 

In response to the three points, the Fourth Board of Appeal found that; (a) the Contested Mark functions as a link between the services registered and the Registrant; (b) the evidence submitted of the use of the Contested Mark was sufficient, even the greyscale use of the Contested Mark (when the Contested Mark shows on the EUIPO register as having the colour description “red, blue”) and the word mark DELTA SKY CLUB, as it maintains the distinctive verbal elements; and (c) the disputed point that the Contest mark was not used for “passenger relaxation” is not proven, as this is the facilities' intrinsic purpose.

Conclusion

The key take-away from this case is the assessment of the evidence relating to ‘place of use’ and the finding that even if services are offered in a market outside the EU (in this case, the US), advertising in the EU may still be sufficient to amount to ‘genuine use’ of the mark sufficient to maintain an EUTM under certain circumstances.

It is unclear how this will be applied in subsequent cases involving the same or a similar issue and whether the decision would apply in the case of goods being offered under a mark, rather than services. Particularly services within the travel and air transportation industry, which are specific insofar as EU consumers are more likely to encounter or use the services whilst travelling outside the EU and are more likely to be targeted in advertisements for the services (i.e. upon purchase of a ticket which would give the customer access to the airport lounge).