Disney’s fight to save registrations for its best-known characters
Hummel Holdings A/S (“Hummel”), a Danish footwear and sportswear brand, applied to cancel several EU registrations owned by Disney Enterprises, INC. (“Disney”). Hummel’s cancellation actions were filed on the basis that Disney’s trade mark registrations had not been used within the EU in five years immediately before the filing of the cancellation actions.
As shown below, the trade mark registrations that have been attacked are for some of Disney’s best-known characters. One would assume that Disney would have no difficulty proving use of these trade marks. However, surprisingly despite filing a significant amount of evidence, Disney has so far lost in almost all cases.
Cancellation for non-use
Once registered, a trade mark protects against use by others of an identical sign in relation to the goods and services covered. This protection extends to similar signs and similar goods or services if a risk of confusion exists. Provided that the registered trade mark is renewed
(every ten years in most countries), the protection is indefinite.
However, rights in a registered trade mark can be cancelled if the mark is not put into genuine use during fixed periods (in the case of a UK or EU registration once every five years). If the mark is used for some goods or services but not others, the registration can be cancelled in relation to the goods or services for which use is not proven. Cancellation may be avoided if the non-use results from circumstances beyond the trade mark owner’s control. The Registry, however, very rarely accepts this defence.
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