General Court Clarifies the Conditions of Genuine Use of Trade Mark

General Court Clarifies the Conditions of Genuine Use of Trade Mark

By Peter L'Ecluse and Thibaut D'hulst

On 5 June 2014, the General Court of the European Union (the "General Court") handed down a judgment in joined cases T-495/12 to T-497/12. The General Court dismissed the appeal lodged by European Drinks SA against the decision of the Fourth Board of Appeal of OHIM (the "Board of Appeal'), which had rejected the opposition filed by the applicant against the registration of trade marks, on the ground that the evidence brought by European Drinks SA was insufficient to demonstrate genuine use of their earlier trade mark.  

On 9 February 2009, SC Alexandrion Grup Romania Srl filed with the OHIM three applications for registration of Community trade marks in Classes 33, 35 and 39 of the Nice Agreement (mainly, alcoholic beverages) for the figurative signs reproduced below:

  

On 17 February 2010, the applicant, European Drinks SA, filed oppositions to the registration of these trade marks, based on the following earlier national figurative mark, registered for the goods and services in Classes 33 and 35 corresponding to alcoholic beverages (except beers) and advertising:




However, both the Opposition Division of OHIM and the Board of Appeal rejected the oppositions in their entirety as the applicant had failed to demonstrate genuine use of its earlier trade mark. The applicant appealed from this decision to the General Court which confirmed the decision of the Board of Appeal while providing useful guidance on the criteria to rely on in the analysis of genuine use.

First, the General Court recalled that, in order to obtain protection of an earlier trade mark, it must be demonstrated that the mark has been put to genuine use in the territory where it is protected during the five years preceding the date of publication of the trade mark application against which opposition was filed.

The General Court added that there is "genuine use of a trade mark" if that trade 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. Moreover, the use must occur publicly and outwardly. In the assessment of whether use of the trade mark is genuine, the General Court explained, all the facts and circumstances relevant to establishing whether the commercial exploitation of the trade mark is real must be taken into consideration.

Lastly, proof of use of the earlier trade mark in a form differing in elements can be taken into account as long as the form does not alter the distinctive character of that mark in the form in which it was registered.

In the case at hand, in order to demonstrate the genuine use of the earlier trade mark, the applicant submitted copies of six invoices for the period from 2 February to 24 April 2009, a copy of the photograph of part of the bottle on which the sign below was visible and a copy of a promotional text relating to "vodka DRACULA" and bearing the verbal element "Dracula" in characters identical to those used in the sign below:

 

The General Court found that the six invoices show that the marketing period for the products at hand was particularly short (less than three months) and that they relate to a period particularly close to the publication of the contested trade mark applications. Therefore, the General Court held that the period of use that had been established by the applicants barely represented genuine use. The General Court added that the possibility of a purely token use of the earlier trade mark could not be ruled out.

In particular, the General Court considered that it is not a matter of examining whether the earlier trade mark had been put to continuous use during the relevant period, but rather a matter of assessing whether the scale and frequency of the use of that trade mark are able to demonstrate its presence on the market in an actual and consistent manner over time, with the sign’s configuration remaining stable. The General Court is of the opinion that this was not the case here.

Moreover, the General Court found that the applicant failed to establish that its earlier trade mark had been used publicly and outwardly.

The General Court also observed that the six invoices provided as evidence contain information on the extent of the use of the earlier mark, namely, an overall sales volume of 2.592 units amounting to a sales frequency of 900 units per month. Having regard to the relevant market, the General Court found that use to reflect a small quantity.

Finally, the General Court considered that the other documents submitted by the applicant as further evidence do not substantiate the place, time or the importance of the use of the earlier trade mark.

Therefore, the General Court held that the evidence submitted by the applicant, assessed overall, did not provide sufficient indications of the place, time, extent and nature of use of the earlier mark. As a result, the General Court concluded that the documents submitted by the applicant were not sufficient to demonstrate the genuine nature of the use of the earlier trade mark and dismissed the appeal.