ECJ considers requirements for genuine use for everyday consumer goods

In Reber Holding GmbH & Co KG v Office for Harmonisation in the Internal Market (OHIM) (Case C-141/13 P, July 17 2014), the Court of Justice of the European Union (ECJ) has upheld a decision of the General Court in which the latter had found that Reber Holding GmbH & Co KG had failed to prove the genuine use of the German trademark WALZERTRAUM for chocolates.

In August 2005 Austrian company Wedl & Hofman filed an application for the registration of WALZER TRAUM as a figurative Community trademark for goods in Class 30 of the Nice Classification. German company Reber lodged an opposition against this application based on its German word mark WALZERTRAUM, which covered, among other things, "chocolates" in Class 30. Upon Wedl & Hofman's request, Reber submitted the following evidence to prove that its mark had been put to genuine use:

• a written statement by Reber's manager dated January 2007;
• two undated photographs showing Reber's confectionery shop;
• copies of the monthly sales of Reber's chocolate products from March 2001 to December 2002; and
• screen shots from Reber's website dated March 2004 and January 2007 showing the different kinds of chocolates sold by Reber.

While the Opposition Division of OHIM was of the opinion that Reber had proved the genuine use of its WALZERTRAUM mark, the Fourth Board of Appeal did not share this opinion, concluding that the trademark had not been put to genuine use in Germany with regard to the goods for which the mark was registered. Although there was some level of use, such use could not been considered as genuine.

The General Court confirmed the board's decision and argumentation.

On appeal, the ECJ concluded that the General Court's decision was correct and that the court had not misapplied the concept of 'genuine use'. Therefore, all instances, with the exception of the Opposition Division, were of the opinion that the trademark WALZERTRAUM had not been put to genuine use.

Before the ECJ, Reber primarily complained that both the Board of Appeal and the General Court had erroneously found that its mark had not been put to genuine use in Germany and that, therefore, they were in breach of the principle of equal treatment.

The ECJ did not follow Reber's argumentation and stressed once again that any kind of use of a trademark will not necessarily amount to genuine use. In this respect, there is an interdependence between the volume of the sales and the nature and characteristics of the relevant goods (ie, the registered goods). The court noted that Reber's trademark was not registered for handmade chocolates or pralines, but for chocolates in general; therefore, the market share and usual distribution of chocolates in general had to be taken into consideration.

The court noted that the sale of 40 to 60 kilograms of handmade chocolates between March 2001 and December 2002 - representing only an average of 200 grams per day - was insufficient to prove genuine use for everyday consumer goods such as chocolates. Such quantities were not sufficient to prove the existence of a share in the market for chocolates and were too low for use of the mark to be qualified as genuine. It was irrelevant that the chocolates were artisanal products and were sold exclusively in Reber's own confectionery shop in Bad Reichenhall in Germany, and not via the Internet or other distribution channels. Further, the ECJ noted that the size of the company which has to prove the genuine use of its trademark is not relevant: what matters are the market share and the economic sector of the relevant goods in general. Therefore, there was no breach of the principle of equal treatment in this case.

Finally, the ECJ stressed once again that OHIM and the General Court are not bound by previous decisions issued by the national offices or by OHIM.

This decision clarifies once again that not any kind of use of a trademark will be regarded as genuine use, even when the use is more than just token use. The requirements to prove genuine use of a mark for everyday consumer goods are high and increasing: it will become more and more difficult for small companies that do not offer everyday consumer goods over the Internet, but sell them only in one or a few shops, to reach the level of sales required to prove genuine use. The case shows that it is difficult to convince the relevant authorities that niche products have special characteristics, if such products have no equivalent in the list of goods as registered.

Tanja Hogh Holub, Beiten Burkhardt Rechtsanwaltsgesellschaft mbH, Munich