Employee's evidence of trademark use needs further consideration

In Henkel KGaA v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance has overturned a Board of Appeal's decision to reject an opposition to the registration of KLEENCARE as a Community trademark filed by Henkel - the owner of a CARCLIN mark. The court held that the Board of Appeal had incorrectly refused to (i) reconsider the substance of an employee's statement outlining evidence of use of the CARCLIN mark, and (ii) admit fresh evidence.

LHS (UK) Ltd applied to register KLEENCARE as a Community trademark for a cleaning product. Henkel opposed registration on the basis of its prior registration for CARCLIN for the same type of product. However, the Opposition Division at the OHIM rejected Henkel's opposition.

At LHS's request, Henkel had submitted evidence of use of CARCLIN. The evidence supplied was in the form of:

• an affidavit from its industrial manager concerning the turnover of CARCLIN products;
  
  
• three labels showing use of CARCLIN; and
  
  
• five instruction manuals for CARCLIN products.

Such evidence would have been sufficient under German law. However, the Opposition Division took the view that Henkel had not proved proper use of CARCLIN because (i) it had not submitted invoices, and (ii) the declaration from an employee was of less probative value than statements from third parties. Henkel appealed and submitted invoices relating to the use of CARCLIN to the Board of Appeal.

The Board of Appeal did not address the question of whether an employee's statement has the same legal value as a statement of a third party because it concluded that Henkel had not questioned the Opposition Division's decision in this regard. It also refused to consider the invoices, holding that they had not been submitted in due time. Henkel appealed again, arguing that the Board of Appeal had an obligation to conduct a full examination of the Opposition Division's decision.

The Court of First Instance overturned the decision of the Board of Appeal. It noted that pursuant to the Community Trademark Regulation the Board of Appeal has the power to determine issues before it on the basis of previous and fresh evidence; it can also send a case back to the Opposition Division for reconsideration. It further stated that the terms of an appeal only define the subject matter of the appeal proceedings and do not determine the level of examination that is required by the Board of Appeal. Therefore, the Board of Appeal must examine all aspects of a case regardless of whether or not they were included in the grounds for appeal. In the case at hand, the court held that the Board of Appeal should have examined whether Henkel's employee's statement was proper evidence of use and, as the Board of Appeal had failed to do so, the court overturned its decision and remitted the case for further consideration.

Carsten Albrecht, Lovells, Hamburg