Published article on LANDSLIDE – A publication of the ABA Section of Intellectual Property Law

Although many decisions show a more relaxed approach on evidence proving genuine use of a Community Trademark (or a national trademark in the European Union), in cases T495/12 to T497/12, decided on June 5, 2014,  the General Court identifies the minimum standards.

1 – Parties and background of the dispute

The plaintiff, European Drinks SA, (Romania), hereinafter ‘European Drinks’, challenges the decision of the Board of Appeal favorable to SC Alexandrion Grup Romania Srl,  (Romania), hereinafter ‘Alexandrion’.

In particular, Alexandrion is the intervener in the proceeding before the General Court brought by European Drinks against the OHIM, the defendant.

On February 9, 2009, the intervener, Alexandrion Grup filed three applications for registration of Community trademarks with the Office for Harmonisation in the Internal Market (OHIM), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

The marks in respect of which registration was sought are the figurative signs reproduced below seeking protection in international classes 33, 35 and 39:

On February 17 2010, European Drinks filed  three notices of opposition under Article 41 of Regulation No 207/2009 challenging registration of the marks applied for on the grounds of likelihood of confusion with an earlier national trademark pursuant to Article 8(1)(b) of Regulation No 207/2009.

The oppositions were based on the following earlier national figurative mark:

(National trademark, registered on 31 August 1995 in Romania and duly renewed under number 34847, in particular for the goods and services in Classes 33 and 35.)

Along with the notice of opposition, European Drinks submitted evidence to demonstrate genuine use of the earlier national mark in Romania, namely, six invoices from the period from 2 February to 24 April 2009, a photograph and a copy of a promotional text.

No additional evidence, despite the request, was shown.

The Opposition Division rejected the oppositions in their entirety and so did the Board of Appeal on the grounds of lack of genuine use and insufficient evidence proving use of the national trademark.

Now, the plaintiff, European Drinks, claims that the Court should annul the contested decisions and order OHIM to pay the costs.

2 – Finding of the General Court

The preliminary rule of law mentioned by the General Court is the recital No.10 of the preamble to Regulation No 207/2009, namely, that there is no justification for protecting an earlier trade mark, except where it is actually used.

Such a principle is substantially identical to ‘USE IT OR LOSE IT’, extensively known in the United States trademark law.

In particular, the Court finds that ‘there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, Case C40/01 Ansul [2003] ECR I2439, paragraph 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (VITAFRUIT, paragraph 39, and COLORIS, paragraph 21).’

In addition,  it is said, ‘as to the extent of the use of the earlier trade mark, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (VITAFRUIT, paragraph 41, and Case T334/01 MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON) [2004] ECR II2787, paragraph 35).’

In fact, ‘the more limited the volume of sales of items bearing the mark, the more necessary will it be for the party opposing new registration to produce additional evidence to dispel possible doubts as to the genuineness of the use of the mark in question (HIPOVITON, paragraph 37, and VOGUE, paragraph 31).’

Also, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (Case T356/02 Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT) [2004] ECR II3445, paragraph 28, and COLORIS, paragraph 24).

In this particular case, the evidence submitted bearing an incontestable date was the following:

copies of six invoices, written in Romanian, issued by a company, Scandic Distilleries SA, and addressed to the same wholesaler established in Romania, SC TGIE, for the period from 2 February to 24 April 2009, each relating, inter alia, to 432 products for which no description is provided but which are associated with the wording ‘V. DRACULA’.

Then, the Court states that in these circumstances, ‘although those invoices may be taken into account, the duration and the frequency of the use adduced does not support the conclusion that the products bearing the name of the earlier mark were marketed continuously over the relevant period (see, by analogy, VITAFRUIT, paragraph 48, and judgment of 16 September 2013 Case T200/10 Avery Dennison v OHIM — Dennison-Hesperia (AVERY DENNISON), not published in the ECR, paragraph 50). Therefore, the Board of Appeal rightly found in paragraph 24 of each of the contested decisions that the period of use that had been established barely represented genuine use.’

Not even geographically such figures seem to fulfill the extent of genuine use. As a matter of fact, the Court did actually take into account the average of sales of the products nationwide comparing the numbers with the samples submitted.

In response, the plaintiff alleges that the six invoices were to be regarded as samples while the Court finds that ‘the fact that they were issued on dates that were close together and the fact that they relate to a period that is particularly short and particularly close to the publication of the applicant’s Community mark applications could not entirely exclude the possibility of a purely token use of the earlier mark.’

In that regard, the Court maintains that that evidence, considered as a whole, does not provide sufficient indications of the place, time, extent and nature of use of the earlier mark.

As a consequence, the documents which European Drinks submitted to OHIM are not sufficient to demonstrate the genuine nature of the use of the earlier national mark.

On those grounds, the General Court dismisses the actions and orders European Drinks SA to pay the costs.

3 – Conclusion
The previous decisions of the General Court, lenient to the evaluation of evidence submitted as proof of genuine use, are being narrowed to ‘use it or lose it’ kind of approach.

In fact, contrary to what has been thought lately,  it is recommended that practitioners be as more conservative as possible and submit massive circumstantial evidence broader than just samples. Competition and litigation over trademarks in the EU is drastically increasing. As a result, Legislators and Courts might rule more and moreover favor of actual trademark users instead of owners of earlier rights defending, however, dead trees.