In CTM oppositions, proof of use can make or break a case. Gauging whether an opponent's rights are subject to such proof is therefore key for applicants, since vulnerability on use may enable an applicant to throw a costly and burdensome hurdle into an opponent's path and may undermine or even defeat an otherwise robust-looking case.
Since use requirements only kick in five years after registration in the EU, age is everything when calculating whether a registration is subject to proof of use. When it comes to identifying registration dates, however, all is not necessarily what it seems. In Germany, in particular, registration is granted before the opposition term begins to run, and if opposition is filed the eventual outcome for a "registered" mark can remain in limbo for many months or even years. The General Court's recent decision in Lanĉome parfums et beauté & Cie. v OHIM (T-466/08) offers much-needed clarity on when OHIM proof of use requirements begin to run in respect of German national registrations, in particular, which is of key importance to CTM applicants facing oppositions by German entities.
The case began when Focus Magazin Verlag GmbH, proprietor of a German national registration for FOCUS registered in multiple classes including Class 3, opposed a CTM application by Lanĉome for ACNO FOCUS for cosmetics and make-up in Class 3.
Focus Magazin's national registration bore a registration date of 23 May 1996. However, in Germany oppositions take place only after registration, and Focus Magazin's registration was indeed challenged (albeit not in all classes) in several sets of opposition proceedings which were not concluded until 13 January 2004, some eight years later. The difference was critical, because if the registration date meant what it said, Focus Magazin's registration would be subject to proof of use in the CTM opposition proceedings.
Unsurprisingly, Lanĉome asserted that position, arguing that the German registration had been registered for more than five years as of the date of publication of the opposed CTM and was therefore subject to proof of use. Registration, Lanĉome argued, had to mean just that: the date of registration must be clear and unequivocal, and should not depend on post-registration factors or on provisions of national law.
Lanĉome also argued that even if German national law were relevant, the expressed registration date would still be the material date for calculating vulnerability to proof of use. It further submitted that if post-registration national opposition proceedings had the effect of postponing the material date, then the postponement would only apply to the opposed goods or services, and not to the remainder, for whom the registration date would remain the original date of registration.
In Clear Focus
At first and second instance, Lanĉome fell short. Its appeal took it no further.
On appeal, the General Court noted that although substantive elements of trademark law had been harmonised in the EU, procedural aspects had not. The effective date of registration of national marks was an aspect of procedural, not of substantive law, even though it could have substantive effects. Consequently, it was appropriate to look to national legislation to determine the effective date of registration for national marks.
In this case, the relevant German law confirmed that in fact that the registration date remained the registration date - except where a registration was opposed, in which case the registration date would effectively be replaced by the date on which the opposition proceedings were completed.
The German law made no distinction between opposed goods and services and those which were not opposed, and consequently the Court saw no basis for Lanĉome's argument that the five-year period might begin to run at one point for some goods and services, and at another point, or other points, for others.
Since the Court agreed with the lower tribunals in finding a likelihood of confusion, its ruling on proof of use sealed a further defeat for Lanĉome.
No doubt the Court perceived the alarming potential for confusion inherent in Lanĉome's alternative argument that different registration dates might apply to different goods.
Indeed, the situation is arguably bad enough as it is. In an EU made up of 27 different member states, there is no uniformity as to whether oppositions take place before or after formal "registration", nor indeed as to whether opposition is possible at all. Now it is clear that not only are there differences in whether opposition, if available, is pre- or post-registration, but there may also be hidden differences in the effect of formal registration dates in cases where registrations are opposed. As provisions of national law govern, those peering in from the outside will often need local advice and guidance in order to determine a fundamental fact which seems clear on the record but may not be what it seems, namely the date of registration.
That the date of registration should be a procedural rather than a substantive matter is arguable, but even if it is procedural it clearly crosses over into substantive law because of its importance on determining enforceability of rights in opposition, invalidity and infringement proceedings. Many brand owners may regret the absence of a uniform rule for calculating registration dates that applies across the board in the EU. The situation as it stands is simultaneously clear, in that national law applies, and unclear, in that such law is generally unknown and often not easily accessible to outsiders who are prevented by language or other barriers from delving in quickly to find the answer.
Having said that, this ruling does at least put brand owners and applicants in the EU on notice that registration dates for national registrations may not be what they seem. Whether and when a registration becomes subject to use requirements is an important factor to weigh in the balance both when mounting a challenge, or defending one. Where national registrations are involved, there is likely to be no substitute for local advice.