Evidence of genuine use must be considered as a whole

European Union
In J & F Participações SA v Office for Harmonisation in the Internal Market (OHIM) (Case T-324/09, February 17 2011), the General Court has held that there was a likelihood of confusion under Article 8(1)(b) of the Community Trademark Regulation (40/94) between a figurative Community trademark (CTM) containing the word 'Friboi' and the earlier registered UK word mark FRIBO. Both marks were designated for certain foodstuffs in Class 29 of the Nice Classification.

Upholding the decision of the First Board of Appeal of OHIM, the General Court looked at the overall impression created by the marks, the principle of interdependence, the partial identity and the similarity of the goods concerned, as well as the similarity of the signs. The General Court ruled that the proprietor of the earlier mark was able to rely on invoices from the goods' manufacturer, a sister company in the Netherlands, to demonstrate genuine use of the mark. It held that the marks were visually and aurally similar, and rejected the applicant's argument that the Portuguese origin of its proposed mark made it distinctive, holding that this distinction would not be relevant to the average English-speaking consumer.

J & F Participações SA applied to register a figurative sign which consisted of the word 'Friboi' as a CTM in Class 29 in relation to "meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats":

The application was opposed by Plusfood Wrexham Ltd, the registrant of:
  • the UK word mark FRIBO, which was protected in Class 29 for "meat, fish, poultry and game, none being live; meat extracts; preserved, dried or cooked fruits and vegetables; milk and dairy products for food; edible oils and edible fats"; and
  • two figurative FRIBO marks, registered in Germany for "deep-frozen meat products" in Class 29. 

Plusfood's opposition was based on the grounds of likelihood of confusion under Article 8(1)(b) of the regulation. J & F appealed, contending that the registrant had not provided sufficient proof of use and that there was no likelihood of confusion under Article 8(1)(b) due to differences between the marks and the relevant goods.
 
A key issue that was considered by the First Board of Appeal of OHIM was whether Plusfood had provided sufficient proof of genuine use of its UK mark. Looking at the documentation provided by Plusfood as a whole, the board allowed the application for the CTM in respect of "eggs, milk and milk products; edible oils and fats" and rejected it in respect of "meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces". It held that there was a likelihood of confusion in relation to "meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces" due to:
  • the visual and phonetic similarity between the signs;
  • the fact that the marks had no conceptual meaning in English; and
  • the fact that the relevant goods were partially identical or similar.
Before the court, J & F disputed the evidence of use provided by Plusfood, which consisted of invoices issued by another company in its group that was based in the Netherlands and brochures of the other company in the same group as Plusfood. J & F submitted that the invoices referred to internal operations and did not, therefore, demonstrate that the goods had been placed on the market. J & F further pointed out that the invoices concerned another member of Plusfood's group. As regards the brochures, J & F submitted that they could not be proof of use of the earlier mark, as that mark is registered in the name of Plusfood, not the group company.

The General Court held that the Board of Appeal had not erred in finding, in its global assessment of all of the documentation, that Plusfood had provided sufficient proof of genuine use. The court stated that, while sole use of a mark between companies within the same group does not constitute genuine use, the brochures submitted by Plusfood were sufficient to show that the goods at issue were sold on the market by the other company within the same group as Plusfood. The court additionally found the invoices submitted to be authentic and honest. Although the brochures were not dated, the invoices were, and on a global assessment of the evidence provided, genuine use had been proven. 

With regard to likelihood of confusion, the General Court found that, even if the earlier registration had been proven only in relation to "precooked or manufactured [meat] goods", for example, such goods would remain highly similar to fresh meat. J & F submitted that the mark applied for had a meaning as a contraction of two Portuguese words and that there were conceptual differences between the signs, as the earlier mark had no meaning. The court rejected this argument on the basis that the relevant public was in the United Kingdom, not Portugal - the contraction of two Portuguese words would have no significance to the average UK consumer.

The case confirms that, in assessing the proof of genuine use of a mark, the courts will look at the evidence provided as a whole. Moreover, the courts will consider the relevant public when assessing whether there is a likelihood of confusion between the earlier registration and the new application.

Jessica Higginson, Ashurst LLP, London

Get unlimited access to all WTR content