Court reiterates what evidence of use is sufficient in invalidity proceedings

European Union

In Certmedica International GmbH v Office for Harmonisation in the Internal Market (OHIM) and Lehning entreprise v OHIM (Joined Cases T-77/10 and T-78/10, February 29 2012), the General Court has partially annulled a decision of the Second Board of Appeal in which the latter had declared that the trademark L112, owned by Certmedica International GmbH, was invalid for “pharmaceutical and veterinary preparations; medical products for internal use; food supplements for medical purposes” in Class 5 of the Nice Classification. The declaration of invalidity was based on the earlier trademark L.114, owned by Lehning entreprise, which designated “pharmaceutical products” in Class 5.

The General Court upheld the registration of L112 for “veterinary preparations; dietetic foodstuff concentrates with a shellfish base (including chitosan)” in Class 5.

The word mark L112 designated the following goods:

  • Class 5: “Pharmaceutical, veterinary and sanitary preparations; medical products for internal use; food supplements for medical purposes; dietetic foodstuff concentrates with a shellfish base (including chitosan)”.
  • Class 29: “Foodstuff concentrates with a shellfish base (including chitosan)”.

Lehning filed an application for a declaration of invalidity of the mark L112 for all the goods in Class 5, except “veterinary preparations”. Both the Cancellation Division and the Second Board of Appeal of OHIM partially upheld the registration of L112 - namely, for “sanitary preparations; dietetic foodstuff concentrates with a shellfish base (including chitosan)”. Certmedica and Lehning both appealed to the General Court.

Before the court, Certmedica put forward the following pleas:

  • infringement of Articles 57(2) and (3) of the Community Trademark Regulation (207/2009) and Article 15(1)(a) regarding proof of genuine use of the trademark L.114; and
  • infringement of Articles 53(1)(a) and 8(1)(b) concerning the existence of a likelihood of confusion.

Lehning alleged infringement of Articles 8, 52 and 53 of the regulation because the registration of L112 covered “dietetic foodstuff concentrates with a shellfish base (including chitosan)”, which it considered to be similar to “pharmaceutical products”.

With regard to Certmedica’s first plea, the General Court pointed out that, to assess whether an earlier mark has been put to genuine use, the court should carry out an overall assessment of the documents in the file, bearing in mind all the relevant factors of the case. 

The Board of Appeal and, subsequently, the General Court based their decisions on the following documents:

  • 26 invoices showing use of the mark L.114 in 2000, 2002 and 2003;
  • photographs of packaging of products marketed by Lehning under the trademark L114 (without the full stop);
  • an extract from a catalogue from Lehning, showing that the L.114 product had been marketed since 1948; and
  • a solemn declaration (in French) made by Lehning's president regarding the use of L.114.

Items 1 and 2 constituted the most credible evidence. Even though Certmedica alleged that it had not received copies of the invoices, it knew of their existence at the time of the cancellation decision. The General Court held that proof of genuine use of a trademark can include use of the mark in a different shape or form, as long as the distinctive character of the trademark has not been altered. In the present case, the court found that the distinctive character of the trademark L.114 had not been altered by the missing full stop on the packaging or by the addition of the word 'Lehning' written in smaller letters separately from the mark.

Items 3 and 4 were not given much weight; however, the General Court held that, even though some evidence in itself may not be sufficient to prove use, the accumulation of such evidence may suffice. Consequently, the court dismissed Certmedica's first plea.

The second plea put forward by Certmedica was (essentially) rejected by the General Court; as was Lehning's first plea.

The court recalled that, to assess the likelihood of confusion, it must compare the goods concerned and the marks with regard to the relevant public. The relevant public in the present case included not only the average consumer, but also particularly observant consumers.

The General Court held that the goods were identical, since the goods covered by the earlier mark were included in the more general category covered by the later mark. Moreover, the fact that the manufacturing methods of the products differed did not imply that the products were different with regard to their intended purpose; nor did the fact that the products are sold on different shelves in pharmacies imply that they were different. However, the mere fact that the products covered by both marks are sold in pharmacies, and the fact that the goods belong to the same class, did not mean that the goods were similar. Lehning’s pleas of infringement of Articles 8, 52 and 53 were thus rejected.

The General Court further held that the consumers generally pay greater attention to the beginning of a trademark than to the end. It found that the signs differed only in the last digit and that the full stop after the capital 'L' in the L.114 mark was hardly visible. The trademarks were structurally similar and, on that basis, the court found that the marks were visually similar.

The General Court also held that the pronunciation of the last digit in the marks was different; due to the relative brevity of the signs, that difference was significant phonetically and the marks were not similar in that respect.

With regard to the conceptual comparison, the marks were found to be similar due to the fact that the full stop in Lehning’s earlier trademark was hardly visible and the 'L.' part of L.114 did not constitute a reference to Lehning; therefore, the full stop did not change the concept.

Since the marks and the goods were found to be similar, the registration for L112 was cancelled for “pharmaceutical preparations, medical products for internal use, food supplements for medical purposes” in Class 5. The General court annulled the Second Board of Appeal’s decision regarding “veterinary preparations” due to the fact that Lehning had not applied for a declaration of invalidity in respect of those goods.  

Christian Kragelund and Lisbeth Guldbæk Lemb, Gorrissen Federspiel, Aarhus

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