Opposing a CTM based on non-registered marks or other signs used in trade is typically, for brand owners, a last resort. Pleading earlier registered rights involves far less work in proving the existence of the right relied upon, freeing up resources to focus instead on evidence relating to other essential facts, such as a likelihood of confusion.
However, hearts may sink a little less now when there are no registered rights to plead, following encouraging guidance from the General Court on the nature of the evidence needed to prove the existence of non-registered marks or other signs used in the course of trade (T-430/08).
The issues came to the fore recently when Grain Millers GmbH & Co. KG opposed a CTM application for GRAIN MILLERS of Grain Millers, Inc. in Classes 29, 30 and 31. Opposition was based on the business name Grain Millers and on a figurative representation of that name, which appeared on the Opponent's letterhead.
Opposition was therefore based on Article 8 (4) CTMR, which reads:
4. Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
The Opponent relied on para. 5 (2) and para. 15 (2) of the German Gesetz über den Schutz von Marken und Sonstigen Kennzeichen, which extended protection to "business designations."
To prove its ownership of an earlier non-registered mark or other sign used in the course of trade, of more than mere local significance, the Opponent filed inter alia a press release, an article in a German newspaper, correspondence between the Opponent and various business partners and an invoice, all dating from a period only shortly preceding the filing of the opposed application. All related to the Opponent's business in the sale of wheat flour and rye flour.
The evidence filed was not heavy or substantial, nor did it establish long-existing prior use. Moreover, some of the letterhead documents included the Opponent's company name but predated the actual incorporation of the company. Nevertheless, the opposition was upheld by OHIM and the Board of Appeal, and the Applicant appealed to the General Court.
Before that Court, the Applicant argued that the proof of existence of a non-registered mark or sign should rise to the level of proof of "genuine use" within the meaning of Article 42 (2) CTMR. Such proof would then require an opponent to prove the time, place, extent and nature of the use in a manner detailed enough to prove use sufficient to create and maintain market share in the relevant sector. By this measure, the Opponent's forlorn collection of correspondence, a press release, a newspaper article and a single invoice would have seemed rather inadequate.
The Applicant asserted, moreover, that the Opponent's use of the designation "GmbH & Co. KG" before its company was fully incorporated was unlawful under German law, although without providing any basis for that assertion.
Finally, the Applicant attacked the Opponent's evidence of a single transaction with a Romanian company for the import of wheat flour into Germany as not demonstrating use within Germany, where the Opponent was incorporated, and denounced the press release as deserving little weight since it emanated from the Opponent.
Through the Mill
When the General Court had sifted the wheat from the chaff of the Applicant's submissions, however, little of substance was left.
On the issue of "genuine use", the Court found that this principle did not apply to Article 8 (4). Genuine use could be required in relation to registered rights under Article 8 (2), but it was clearly not required under Article 8 (4). There, the Court held that the test was whether a non-registered mark or sign was used in the course of a trade, in which the use occurred "in the context of commercial activity with a view to economic advantage and not as a private matter." This is considerably less onerous than the concept of genuine use, and less is therefore needed to prove it.
The Court took a very dim view of the Applicant's unsupported assertion that the Opponent's use of its corporate designation before formal incorporation was contrary to German law. The Board of Appeal had held otherwise, and the Applicant's unsubstantiated allegation on appeal failed to specify the relevant provision of German law nor the consequences of breaching it, and therefore made it impossible for the Opponent to reply to it. As a result, the allegation was deemed inadmissible.
With regard to the invoice and press release, the Court was satisfied that these were relevant and probative on the issue of whether use had been made in a commercial context with a view to economic advantage. The invoice clearly related to a commercial transaction, and the press release was clearly advertising, designed to promote the Opponent's business. The newspaper article also submitted in evidence was regarded as an "echo" of this advertising.
The fact that the one commercial transaction proved was a cross-border one was helpful in showing, moreover, that the use was not of merely local significance. Even if all the use had been in a country other than Germany, however, that would have been permissible under Article 8 (4), which did not require that the use be in the same Member State as that conferring the rights evoked.
Having ground all of the Applicant's submissions to powder, the Court dismissed the appeal.
This case is highly encouraging to brand owners who spot conflicting CTMs, but who lack prior registered trademarks on which to base a challenge. It gives hope to those who need to rely, instead, on rights acquired under national law through prior use or through the use or registration of business names or the like.
The outcome in GRAIN MILLERS shows that such a challenger will not necessarily be forced to prepare substantial and expensive evidence to prove the existence of his right, depending on the requirements of the national law on which he relies. That in itself is an issue that must be proved in evidence, but copies of the relevant national law and possibly also a concise analysis from a leading textbook should suffice.
Brand owners who seek to rely on an earlier passing off right in the UK may face a tougher climb than the Opponent in GRAIN MILLERS, since passing off requires proof of goodwill, together with evidence that the use of the opposed mark would amount to a misrepresentation causing damage. Proof of goodwill in itself is not necessarily as straightforward as proving existence of a "business designation" under German law, and proof of a misrepresentation seems to go rather further than what was required in the GRAIN MILLERS case.
Nonetheless, the fact that the strictures relating to proof of "genuine use" do not apply to Article 8 (4) will at least free UK-based challengers from the highly formulaic evidence requirements relating to proof of genuine use, and leave them to focus on the important evidential issues needed to prove a right in passing off.
Companies with a business in more than one EU country may be able to weigh up the relative merits of the various national laws and to bring an Article 8 (4) opposition based on the one that creates the least onerous evidential burden. A bounteous harvest from GRAIN MILLERS, indeed.