EUIPO Confirms Revocation of ICON A5 (3D) Trade Mark after Failure to Prove Genuine Use

The requirement of genuine use is one of the structural pillars of EU trade mark law. It reflects a deliberate legislative choice to ensure that exclusive rights are reserved for signs that actually perform their essential function on the market, namely, to distinguish goods or services in the course of trade. The decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) in R 524/2025-5, ICON A5 (3D) provides a particularly instructive illustration of how rigorously this requirement is applied, both procedurally and substantively.

The case is notable not because it introduces new legal principles, but because it consolidates and applies established doctrine with considerable strictness, especially in circumstances involving complex products, long development cycles, and regulatory constraints.

Factual Background and Procedural History

The contested mark was a three-dimensional EU trade mark registered in June 2011, representing the external shape of the ICON A5 amphibious aircraft. Registration was obtained for an extensive list of goods in Class 12, including aircraft, seaplanes, and structural components, as well as for various toy vehicles and scale models in Class 28. The mark claimed the colours white, red, and black.

In April 2022, a request for revocation was filed on the ground of non-use under Article 58(1)(a) EUTMR. At that point, the mark had been registered for more than ten years, and the relevant five-year period for assessing genuine use ran from 28 April 2017 to 27 April 2022.

The Cancellation Division duly notified the then proprietor and granted multiple opportunities to submit evidence of use, including an extension of time and, subsequently, a lengthy suspension of the proceedings due to negotiations between the parties. Despite these procedural accommodations, no evidence or observations were filed within the applicable time limits. As a result, the Cancellation Division revoked the trade mark in its entirety with effect from the date of the revocation request.

Following a transfer of ownership in early 2025, the new proprietor lodged an appeal and, for the first time, submitted witness statements and references to evidence allegedly filed in earlier opposition proceedings.

The Legal Test for Revocation under Article 58(1)(a) EUTMR

Article 58(1)(a) EUTMR establishes a clear and cumulative test: an EU trade mark must be revoked if it has not been put to genuine use in the European Union for a continuous period of five years, unless the proprietor can demonstrate proper reasons for non-use.

As the Board of Appeal recalled, genuine use requires objective evidence showing that the mark has been used in accordance with its essential function in the context of actual commercial activity. This entails proof relating to the place, time, extent, and nature of use. In revocation proceedings, the burden of proof lies squarely with the trade mark proprietor, and this burden must be discharged in relation to each of the goods or services for which protection is maintained.

The Board further reiterated the underlying policy rationale: the EU trade mark register is not intended to function as a strategic reserve conferring indefinite exclusivity on unused signs. Rather, it must reflect economic reality and the actual deployment of trade marks in the marketplace.

EUTM No. 9 676 594

Procedural Non-Compliance and the Consequences of Late Evidence

The decisive issue in the appeal was not whether the evidence eventually submitted could, in theory, support a finding of genuine use or justified non-use. Instead, the appeal turned on whether that evidence could be taken into account at all.

The Board of Appeal answered this question in the negative. Relying on Article 95(2) EUTMR, Article 27(4) EUTMDR, and the Rules of Procedure of the Boards of Appeal, it confirmed that facts and evidence submitted for the first time on appeal must, as a rule, be disregarded unless strict cumulative conditions are met. These include, in particular, that the evidence be prima facie relevant and that the failure to submit it earlier be justified by valid reasons.

In the present case, none of these conditions was satisfied. The witness statements relied upon were dated from 2021 and were therefore clearly available during the revocation proceedings at first instance. No convincing explanation was provided as to why they were not filed within the applicable time limits. The Board emphasised that appeal proceedings are not designed to allow parties to repair procedural failures or to present an entirely new evidentiary case after having remained inactive before the first instance.

This approach is consistent with settled EU case law and reflects a broader concern for procedural efficiency, legal certainty, and equality of arms between the parties.

Regulatory Approval and the Concept of “Proper Reasons” for Non-Use

The appellant sought to rely on regulatory constraints as a justification for non-use, arguing that the absence of certification from the European Union Aviation Safety Agency prevented the commercialisation of the aircraft in the EU. While acknowledging that aircraft certification is a prerequisite for lawful operation, the Board rejected the argument that this constituted a proper reason for non-use within the meaning of Article 58(1)(a) EUTMR.

The Board noted, first, that the evidence suggested the proprietor had focused its regulatory efforts primarily on the United States and had not commenced a corresponding certification process in the EU during the relevant period. Second, there was no persuasive evidence of serious preparatory acts or outward-facing commercial activities aimed at the EU market, such as targeted promotion, structured pre-sales, or other concrete steps demonstrating an intention to create or preserve market share in the European Union.

In line with established jurisprudence, the Board reiterated that only obstacles independent of the proprietor’s will may justify non-use. Strategic or commercial decisions, such as postponing EU certification or prioritising other markets, remain within the proprietor’s control and cannot, in themselves, excuse prolonged inactivity.

Evidence from Parallel Proceedings: Limits of Cross-Reliance

A further argument raised on appeal concerned the existence of extensive evidence allegedly submitted in parallel opposition proceedings. The Board rejected this line of reasoning, making it clear that general references to evidence filed in other cases are insufficient, particularly where such evidence is confidential or not formally incorporated into the case file.

While EU case law recognises that documents from other proceedings may, in certain circumstances, be taken into account, this presupposes a timely and explicit reference before the first-instance decision is taken. In the present case, the references were made only at the appeal stage, which was far too late to cure the earlier omission.

Implications for Trade Mark Strategy and Risk Management

The ICON A5 (3D) decision offers several important lessons for trade mark owners, especially those operating in sectors characterised by high regulatory barriers and long development timelines.

First, procedural diligence is critical. The failure to submit evidence within prescribed deadlines will, in practice, be fatal, regardless of the substantive merits of that evidence.

Second, regulatory complexity does not suspend the obligation to use a trade mark or, at the very least, to demonstrate concrete and targeted preparatory steps towards market entry in the EU.

Third, non-traditional marks, including three-dimensional shape marks, require particularly careful portfolio management, as their vulnerability to revocation is heightened in the absence of sustained commercial use.

The dismissal of the appeal in ICON A5 (3D) is a clear affirmation of the EUIPO’s strict, market-oriented approach to trade mark protection. The decision underscores that intentions, future plans, or internal development efforts cannot substitute for genuine use or properly justified non-use within the European Union.

For trade mark proprietors, the message is unambiguous: exclusive rights under EU trade mark law are maintained through timely action, procedural discipline, and demonstrable engagement with the market. Where these elements are missing, even long-standing registrations may be lost.

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