A registered trademark is not a static asset. Under EU law, a mark can be revoked if it drifts into generic use — and the proprietor who failed to prevent that drift may find the courts hold them personally responsible. This article examines how that liability is assessed, and what the CITY STADE judgment means for trademark owners operating across Europe.
A System Japan Does Not Have
In Japan, trademark law provides no mechanism to revoke a registered mark solely because it has become generic through post-registration use. Defenses exist — Article 26 of the Japan Trademark Act, or arguments that a use does not constitute "trademark use" — but the registration itself survives. EU law takes a fundamentally different position.
Article 58(1)(b) of the EU Trade Mark Regulation (EUTMR) permits any third party to apply for revocation of a registered EU trade mark if, in consequence of the acts or inactivity of the proprietor, the mark has become the common name in the trade for the goods or services for which it is registered. Two points distinguish this provision from anything in Japanese practice.
First, causation is required: genericide that occurs despite the proprietor's diligent efforts is not grounds for revocation. It is only when the proprietor's own conduct — or passivity — contributed to the mark becoming generic that revocation follows. Second, and critically, if a mark becomes generic in even a single EU member state, it is revocable across the entire EU. A French-language genericization can extinguish rights in Germany, Sweden, and twenty-five other member states simultaneously.
The EUTMR also contains a provision without Japanese parallel: Article 12 grants a trademark proprietor the right to demand corrections when their mark is reproduced in a dictionary, encyclopedia, or similar reference work in a way that suggests it is a generic term. Upon such a request, the publisher must indicate — at latest in the next edition — that the term is a registered trade mark. The proprietor's failure to exercise this right, when the opportunity exists, can itself constitute "inactivity" in later revocation proceedings.
If a mark becomes generic in even a single EU member state, it is subject to revocation across the entire EU — a French-language genericization can extinguish rights in twenty-six countries at once.
The Case: CITY STADE (T-220/23)
Background
The proprietor, SAS Tennis d'Aquitaine — a manufacturer of transportable sports facilities — held EU Trade Mark Registration No. 011945581 for the word mark CITY STADE, combining the English word "CITY" with the French word "STADE" (stadium). The mark was registered in November 2013 for Class 6 goods: metal transportable buildings designed to accommodate multiple sports, including tennis, basketball, and football.
In February 2021, a competitor, SPORTS ET LOISIRS, filed for revocation before the EUIPO Cancellation Division on the grounds that the mark had become a generic term — specifically, the established industry expression in France for multi-purpose outdoor sports enclosures.
Procedural History
Cancellation Division (Nov 2021) — Genericide established. The proprietor submitted no response or evidence. Revocation granted based on applicant's indirect evidence alone; inactivity attributed to proprietor.
Board of Appeal (Feb 2023) — Genericide confirmed. However, the BoA accepted late evidence from the proprietor (including ® symbol usage and three warning letters) and concluded that genericide was not attributable to the proprietor's acts or inactivity. Revocation reversed.
General Court (Feb 2024) — The GC examined the same evidence with greater scrutiny and reached the opposite conclusion. Genericide was attributable to the proprietor's acts and inactivity. BoA decision annulled; mark revoked.
BoA on Remand (Nov 2024) — Following the GC's ruling, the case was remitted to EUIPO. The Board confirmed revocation in accordance with the General Court's findings.
The Two Issues That Divided the Courts
Both the BoA and the GC agreed on Issue 1: CITY STADE had become the common name in the trade in France for multi-purpose outdoor sports enclosures. The mark was used with articles and possessive pronouns (a city stade, le city stade, son city stade), in singular and plural form, by local authorities, general media, online dictionaries, Wikipedia, and sector professionals — without any consistent indication of its status as a registered mark. Formatting in bold or with quotation marks in some documents was deemed insufficient to counter this pattern.
The courts diverged sharply on Issue 2: whether that genericide was attributable to the proprietor's acts or inactivity. This is where the GC's analysis broke new ground.
The BoA credited the proprietor's systematic use of the ® symbol across all products and catalogues, and found that three warning letters sent to competitors — plus seven further letters sent after the revocation application — demonstrated the proprietor was not passive in defending the mark.
The GC examined the same evidence more closely. The ® usage was found to attach to slogans rather than the mark itself; three letters over eight years was characterized as "very weak in absolute terms"; and the failure to invoke Article 12 correction rights against Wikipedia, Pinterest, and similar platforms constituted clear inactivity.
The GC's Detailed Reasoning
On "Acts" — The ® Symbol
® Usage Has Limited Legal Effect in the EU System
The GC confirmed that EU trademark law recognizes no established practice whereby ® usage automatically confers or preserves distinctiveness. While it may constitute one relevant factor, it is not decisive. More critically, examination of the proprietor's actual usage revealed that the ® symbol frequently appeared adjacent to accompanying images or after slogans — not after the mark itself. Usages such as "You work together to create your CITY stadium®" and "Créez even your CITY stadium®" were interpreted as applying the ® to the slogan, not to CITY STADE as a standalone mark. Some product catalogues introduced the mark under a "Nos Marques" (Our Brands) section; others contained no such introduction at all.
Collectively, These Uses Reinforced Generic Perception
The aggregate effect of the proprietor's own usage — failing to consistently present CITY STADE as a source identifier distinct from its descriptive meaning — was found to have contributed, to a degree, to the mark's generic drift. Genericide was therefore partly attributable to the proprietor's acts.
On "Inactivity" — Inadequate Defence Over Eight Years
Three Warning Letters Over Eight Years: A "Very Weak Reaction"
The GC explicitly defined the relevant period as 2013 (registration) to 2021 (revocation application) — approximately eight years. During this period, the proprietor sent only three warning letters, all at the end of 2020. The seven additional letters sent after the revocation application was filed were disregarded entirely: they were characterized as late-stage reactive measures that could have no effect on whether revocation had already accrued. The BoA's decision to credit those post-filing letters was directly overturned on this point.
Failure to Invoke Article 12 Against Online Platforms
The evidence showed that CITY STADE appeared generically in online dictionaries, Wikipedia, and social media platforms including Pinterest — without the proprietor ever requesting correction under Article 12 EUTMR. The GC confirmed that Article 12's scope extends beyond traditional print dictionaries to encompass exactly these kinds of online reference resources and content-sharing platforms. The proprietor's complete failure to act against any of them was a distinct and significant ground of inactivity.
Post-filing enforcement activity — letters sent after the revocation application was filed — was dismissed entirely. The GC made clear that only pre-filing conduct within the relevant period determines whether revocation has accrued.
Implications: What This Means for EU Trademark Owners
The CITY STADE judgment sharpens the practical obligations of EU trademark proprietors in several important respects. Below is a structured checklist of the key takeaways.
Japan vs. EU: The Key Systemic Differences
| Dimension | Japan | European Union |
|---|---|---|
| Post-registration genericide as revocation ground | No — registration survives; only enforcement defenses available | Yes — Article 58(1)(b) EUTMR; revocation available to any third party |
| Causation requirement | N/A | Yes — must be attributable to proprietor's acts or inactivity |
| Geographic scope of revocation | N/A | EU-wide, even if genericide confined to one member state |
| Dictionary / online correction right | No statutory provision | Yes — Article 12 EUTMR; extends to online encyclopedias, social platforms |
| Effect of post-filing enforcement | N/A | Disregarded — only pre-filing conduct within the relevant period is assessed |
Conclusion
The CITY STADE judgment is a reminder that registering an EU trade mark is the beginning of an active management obligation, not the end of one. EU trademark law does not reward passive ownership. The General Court was unequivocal: a proprietor who sends only three warning letters over eight years, who allows a mark to appear as a generic term in Wikipedia and Pinterest without correction, and whose ® usage attaches to slogans rather than the mark itself, has not done what the law requires to preserve the rights conferred at registration.
For Japanese companies with EU trademark portfolios — particularly those operating through local distributors, and particularly those whose marks contain words in a local EU language — the practical lesson is structural: trademark protection in Europe must be built into day-to-day commercial and distribution management, not treated as a legal matter to be addressed only when a dispute surfaces.
This article is an English adaptation of a paper by Ayaka Honda, Patent & Trademark Attorney,
Konishi & Nakamura, published in the November 2025 issue of Patent
— the monthly journal of the Japan Patent Attorneys Association (JPAA). The JPAA has approximately
12,000 certified IP professionals, all of whom have passed the Japanese national patent attorney
examination. The original paper was prepared as part of the JPAA International Activities Center's
2024 Europe and Africa Section, Trademark and Design Group research program.
Contact: honda@ipworld.jp · Web: https://ipworld.jp/en/