Article 42(3) of Community Trademark Regulation applies to international marks

In Rivella International AG v Office for Harmonisation in the Internal Market (OHIM) (Case T-170/11, July 12 2012), the General Court has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had rejected an opposition in the absence of proof of genuine use of the earlier mark.

Baskaya di Baskaya Alim e C Sas filed an application for the registration of the figurative mark BASKAYA in Classes 29, 30 and 32 of the Nice Classification. The application was opposed by the owner of the earlier international figurative mark PASSAIA, registered for goods in Class 32 and having effect in Austria, Benelux, France, Germany, Italy and Spain.

After having been requested to provide proof of genuine use of the earlier mark, the opponent maintained its opposition only on the basis of the German part of the international registration and filed several documents proving use in Switzerland. The opponent relied on the 1892 Convention between Switzerland and Germany on the reciprocal protection of patents, designs and trademarks, which states that use in Switzerland is equivalent to use in Germany.

The Opposition Division and the Fourth Board of Appeal considered that there was no proof of use of the earlier mark. The opponent appealed to the General Court.

The opponent first referred to Article 5(1) of the 1892 Convention, claiming that, under the convention, the German part of an international registration is regarded as being ‘used’ in Germany when it is ‘used’ in Switzerland. The opponent also questioned whether proof of use of an earlier mark could be requested on the basis of Article 42 of the Community Trademark Regulation (207/2009) as regards an international trademark.

The General Court found that the genuine use of the earlier mark in Switzerland was undisputed, and turned to the issue of the territory in respect of which the proof of use of an earlier mark must be furnished. The court pointed out that the opposition was based on EU legislation; therefore, questions relating to the territorial aspect of the use of the mark were governed by the relevant provisions of Regulation 207/2009, and it was not necessary to refer to the laws of the member states. The fact that an earlier national or international mark can be invoked does not mean that the national law applicable to the earlier mark is the relevant law in Community opposition proceedings.

The General Court recognised that national law can be of relevance when the issue is not addressed in the EU legislation. This is true with regard to the date on which earlier national trademarks are considered to be registered in each of the member states. However, this is not the case with regard to the determination of the territory in which use of the earlier mark (be it a national, international of Community trademark) must be established, which is governed by the Community Trademark Regulation.

In addition, the court noted that the harmonised trademark law of the member states assumes that use must be in the member state concerned, and that the requirement of genuine use has been transposed into Paragraph 26 of the German law on the protection of trademarks. The fact that, internally, Germany applies Article 5 of the 1892 Convention was irrelevant, since this convention is not binding on the European Union under Article 351 of the Treaty on the Functioning of the European Union.

Finally, the court turned to the opponent's argument that proof of genuine use may not be requested as regards an international mark because Article 42(3) of the regulation refers only to national marks. The court recalled that, under Article 8(2)(a)(iii) of the regulation, earlier trademarks include marks registered under international arrangements which have effect in a member state.

This led the court to conclude that Article 42(3) includes international marks and, therefore, proof of use of an international mark could be requested in opposition proceedings.

The appeal, which was based only on the issue of prior use, was thus rejected.

Richard Milchior, Granrut Avocats, Paris