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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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When it comes to proof of use a Lidl evidence may not be enough

Community Trade Mark oppositions are based on prior rights and if the prior right is over five years’ old then the CTM Applicant is entitled to request that the Opponent submits proof of genuine use of the earlier registered mark in respect of the registered goods or services. If the Opponent cannot provide this required proof of use then the opposition will fail. According to settled case law, use of the earlier mark does not necessarily have to be quantitatively significant in order for it to be deemed genuine. However, the proof of use must relate to the place, time, extent and nature of the use of the earlier mark or marks. It is important that an Opponent ticks all of those boxes. A recent case before the General Court (LidlStiftung& Co. v A. Colmeia do Minho; T-300/12) examined the minimum requirements to prove genuine use and how they should be assessed in order to demonstrate such proof of use.
OHIM Found it Fair

A CTM application was filed by Lidl for a Fairglobe logo in Classes 29 and 30 covering a broad range of goods. This application was published on 21 July 2008. Colmeia filed an opposition against this application based on their prior Portuguese trade mark registrations for GLOBO also covering goods in Classes 29 and 30. Following the filing of the opposition, Lidl requested that Colmeia file proof of genuine use of their earlier marks in Portugal in respect of the registered goods. In order to establish use, Colmeia relied on six invoices that they had submitted in their initial observations.

The Opposition Division upheld the opposition in part, finding that genuine use of the earlier marks had been established for some of the Class 29 and 30 goods registered and that there was a likelihood of confusion between the marks. The opposition was rejected for the remaining goods. Lidl appealed this decision, and the appeal was granted in part.

Lidl again appealed, this time to the General Court. They (Lidl) requested that the Appeal Board decision be annulled in so far as it had partially upheld Colmeia’s opposition.

As mentioned above, the proof of use filed by the Opponent need not be quantitatively significant, but it does need to show the place, time, extent and nature of the use of the earlier mark or marks. When the General Court reviewed the evidence of use submitted by the Opponent in the present opposition, they found that this was only in the form of six invoices which had dates within the period April 2006 to February 2008. The six invoices were not accompanied by any additional evidence or documentation. Furthermore, two of the invoices were dated 21 April 2006 and two were dated 15 January 2007. Lidl further claimed that the six invoices were all addressed to the same customer, a subsidiary of the Auchan Group which had then resold the GLOBO products to shops belonging to Auchan that were established in a number of towns in Portugal. In the General Court’s view, the fact that Colmeia’s proof of use only showed the sale of their goods to a single Portuguese customer did not necessarily mean that the use was not genuine.

Before the General Court, Lidl argued that the six invoices were illegible. The Court generally agreed pointing out that this made it impossible to verify the sales figures claimed by the Opponent. Lidl also argued that the Board of Appeal had failed to analyzeColmeia’s sales figures as they applied to specific goods, an error which had led the Board to count the sale of goods that were not covered by the Opponent’s Portuguese trade mark registrations in their analysis. The General Court again agreed.
OHIM had argued that the Opponent’s low level of sales could be explained by the fact that their invoices were merely illustrative of the actual commercial volume of GLOBO products. The General Court dismissed this argument. 

Taking all of the relevant factors into consideration, the General Court found that the deficiencies in the Opponent’s six invoices were such that they could not establish genuine use of the earlier trade marks for the registered goods in Portugal. The contested decision was therefore annulled and the opposition was rejected.

Comment

Whilst we have had previous decisions such as La Mer (T-418/03) which have established that there is no de minimis level of use, as long as it is genuine, the present case shows that if the Opponent does submit a limited amount of use evidence, particularly if that evidence consists of barely legible invoices, then, unless the Opponent also provides further materials, for example brochures, pamphlets and similar, then the use may be seen as only token use by the authorities.

A trade mark owner who wishes to enforce its trade mark rights against third parties must keep good records of its trade mark use. It is up to trade mark advisors to emphasise the hurdles that OHIM put in the way of an Opponent  that relies on an earlier trade mark registration that is outside its non-use grace period. It is always necessary to have evidence that is sufficient enough to ensure that all of the “use” boxes, namely place, time, extent and nature, can be ticked.