In a recent case heard by the General Court, Dimian AG failed to invalidate a mark registered by Bayer Design Fritz on the basis that insufficient evidence was filed (Dimian AG v OHIM, Case T-581/11).
In invalidity proceedings applicants can rely on “non-registered trade marks”. However, in order to be able to rely on this provision, the applicant for invalidity must file evidence to show that they have used the non-registered trade mark in the course of trade, that the use was of more than mere local significance, and also that the use was made right up to the date of filing of the application for invalidity.
In 2007 Bayer Design Fritz Bayer GmbH & Co. KG registered the Baby Bambolina logo shown below in Class 28 in respect of “games, playthings, gymnastic and sporting articles; puppets, dolls, dolls beds, dolls houses, dolls clothing, soft toys; electronic games other than those adapted for use with television receivers only; playing balls, toys for pets, toy vehicles; dolls prams, dolls pushchairs; dolls buggies”:
In 2009, Dimian AG applied for a Declaration of Invalidity on the basis of its non-registered word mark BAMBOLINA which it claimed had been used in the course of trade in the Czech Republic, Denmark, Germany, Estonia, Greece, Spain, France, Ireland, Italy, Latvia, Hungary, the Netherlands, Austria, Poland, Slovenia, Slovakia, Finland, Sweden and the United Kingdom. Dimian also claimed that its BAMBOLINA mark was well-known in these countries within the meaning of Article 6 bis of the Paris Convention.
The Cancellation Division of OHIM rejected the invalidity application on the basis that Dimian had not proved that the earlier mark was still used in the course of trade at the time that it filed the application for a declaration of invalidity. Further, OHIM found that Dimian had not proved that the mark was well-known in any of the countries claimed.
Dimian then filed an appeal against the decision, and the appeal was dismissed by the Second Board of Appeal.
The Board of Appeal criticised the evidence submitted by Dimian on two bases. Firstly, the evidence in the form of a supply contract and invoices only related to the period between 2004 and 2007, and secondly, that the evidence submitted covering the later period of 2007 to 2009, in the form of catalogues and loose pages from catalogues, was more limited. The Board of Appeal found that the evidence was not independent and thus carried less weight. No independent evidence, covering whether sales were made, where they were made and in what quantities, was provided by Dimian.
On a further appeal, the General Court approved of the Board of Appeal’s view. The Court confirmed that Dimian had not proved use in the course of trade of its BAMBOLINA mark of more than mere local significance, and that insufficient evidence up to the date of the application for declaration of invalidity had been provided. The Court therefore confirmed that Dimian’s action should be dismissed.
The General Court paid particular attention to the “mere local significance” requirement when assessing whether Dimian had the right to invalidate Bayer’s registered trade mark. The Court made it clear that, in order for the sign BAMBOLINA to be able to prevent the registration of Bayer’s mark, it would have to have been used in a sufficiently significant manner in the course of trade and its geographical extent should have been more than merely local.
Dimian AG’s evidence was flawed in a number of ways. For example, the catalogue evidence filed was unnumbered and undated and thus it was not clear whether each page referred to in this evidence actually related to the catalogue stated.
It is clear that when filing a declaration for invalidity the evidence is key, especially when relying on unregistered rights. The evidence must be clear, dated and must show that the sign has actually been used in each territory claimed. Applicants should also be aware that the “use” to be shown needs to be significant in order to be accepted. The applicant for invalidity must also ensure that the evidence shows that the earlier mark has been used up until the date that the application for invalidity is filed.
In view of the high evidence hurdle which applies when relying on unregistered rights in invalidity proceedings, trade mark owners should always ensure that their rights are registered. If Dimian had owned an earlier registered trade mark right, this would have been a far more simple case for the applicant to cancel to have won.