With many events and festivals being cancelled or postponed this year, it came as little surprise when Coachella Valley Music and Arts Festival (‘Coachella’) announced it would postpone this year’s events to October. The festival, which typically takes place over two weekends in April amid the Colorado Desert, is one of the biggest music festivals in the world, renowned worldwide for attracting the most established headliners, including Beyoncé, Kendrick Lamar and Lady Gaga.
Although the festival has not officially been cancelled this year, a recent decision of the EU Intellectual Property Office (EUIPO) has partially cancelled an EU trade mark for “COACHELLA” for the majority of goods and services it originally covered, on the grounds that the mark has not been used in the EU.
Trade marks are territorial rights, and in many territories, if they are not put to genuine use within a period of time, they may be vulnerable to cancellation. In the UK and EU, trade marks can be vulnerable to cancellation if they have not been used in the five years following registration, or during an uninterrupted five year period. Third parties can seek to cancel a trade mark if they believe it has not been used for five years.
Bodegas Vinos de Leon, a Spanish company, sought to cancel the EU trade mark for ‘COACHELLA’ owned by AEG Presents Ltd, the entertainment company. Bodegas Vinos de Leon had previously filed an EU trade mark application for ‘COACHELLA’ covering wines, which had been opposed by AEG Presents – which explains why Bodegas Vinos de Leon sought to remove the earlier mark from the register.
AEG Presents submitted evidence arguing that the mark ‘COACHELLA’ was well known in the EU, including articles from UK newspapers, YouTube videos from the festival uploaded by UK residents, and ticket sales figures to customers in the EU.
For the majority of goods and services (including clothing and printed merchandise, as well as services relating to the organisation of performing arts festivals), the EUIPO Cancellation Division found that the use demonstrated by the trade mark owner related to the US but did not constitute genuine use of the mark in the EU. As a result, the mark was revoked.
The Cancellation Division did allow AEG Presents to keep the trade mark for services relating to the organisation and conducting of performing arts festivals where those services are provided online – such as streaming on YouTube.
The decision confirmed that, when services are offered to customers in the EU but can only be taken advantage of outside the EU (such as a US-based festival, flights or restaurant reservations outside the EU) then this does not constitute genuine use in the EU itself. It also offers a reminder of the importance of filing relevant and substantial evidence of use in proceedings – a lesson learnt by McDonald’s, who had its EU trade mark for BIG MAC cancelled last year as it had not provided satisfactory evidence of use.
The decision is open to appeal, but for now, the EUIPO has drawn a line in the sand for the desert festival.