Carlyle had a hotel in the US and registered a trade mark for it in the UK in 1999. Under EU trade mark law, a registered trade mark can be revoked if it has not been put to genuine use within the relevant territory for five years from the date of registration. In this case, Mascha applied to have Carlyle’s registered trade mark revoked. There was evidence that some UK residents had stayed in the US hotel. In addition, there was an office in the UK that had the facility to book stays at the hotel, although there was no evidence that any stays had actually been booked through that office. The trade mark owner accepted that the hotel services were only ever provided in the US, but argued that there had been genuine use because advertising and marketing had taken place in the UK.
Mascha’s application for revocation was granted. There was no evidence that Carlyle had conducted any marketing or advertising of the hotel and its facilities in the UK with the registered trade mark. It was therefore not necessary to go on to consider whether advertising and marketing were sufficient in themselves to amount to genuine use of the trade mark in the UK for services provided in another territory. The registered owner had failed to show genuine use of the mark in the UK, so the registration was revoked.