General Court: articles on product testing have probative value

European Union

In Inter-Union Technohandel GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-278/12, December 9 2014), the First Chamber of the General Court has set aside a decision of the Second Board of Appeal of OHIM on the ground that the latter had carried out an incorrect examination of the evidence of genuine use of the mark on which the opposition was based.

In December 2005 Spanish company Gumersport Mediterranea de Distribuciones SL filed an application for registration of the Community figurative mark PROFLEX for goods in Classes 9, 12 and 25 of the Nice Classification, including accessories for bicycles and motor vehicles.

German company Inter-Union Technohandel GmbH filed an opposition based on the earlier German word mark PROFEX, registered for goods in Classes 6, 8, 9, 11, 12, 16, 17 and 21, claiming a likelihood of confusion in respect of all the goods covered by the application.

The Opposition Division of OHIM rejected the opposition in its entirety, finding that Inter-Union - following a request by Gumersport - had not produced sufficient evidence to prove the genuine use of its earlier trademark. The Second Board of Appeal upheld Inter-Union's appeal, annulled the decision and referred the case back to the Opposition Division, holding that the latter had failed to consider certain evidence of use. In its new decision, the Opposition Division concluded that Inter-Union had established genuine use of its earlier German mark with regard to some of the goods, such as accessories for bicycles and motor vehicles, which led to a refusal of the application for certain goods.

However, following an appeal by Gumersport, the Second Board of Appeal of OHIM annulled the Opposition Division’s decision, finding that Inter-Union had failed to prove the genuine use of the earlier German registration as it had not demonstrated the extent of the use as required under Articles 42(2) and (3) of the Community Trademark Regulation (207/2009).

In its action before the General Court, Inter-Union alleged infringement of Articles 42(2) and (3) of Regulation 207/2009, as well as Article 22 of the Community Trademark Implementation Regulation (2868/95), arguing that the Board of Appeal was wrong to conclude that the evidence before it did not establish the extent of the use of the earlier mark. The General Court, quoting the classical case-law on the criteria for assessing genuine use of a mark (see VITAFRUIT (Case T-203/02) and Ansul (Case C-40/01)), confirmed that the Board of Appeal had not carried out a proper examination of the evidence produced by Inter-Union. The General Court focused its analysis on the following aspects:

  • The affidavit of Inter-Union's authorised representative (which included information on the turnover achieved from the sale of a number of bicycle and motor vehicle accessories marketed under the earlier mark) as proof of genuine use of the earlier mark in itself - the General Court followed established case-law stating that an affidavit might constitute evidence of use of the mark; however, it upheld the Board of Appeal’s finding that, given the clear links between the signatory of the affidavit and Inter-Union, probative value could not be attributed to that statement itself, unless it was supported by other evidence, regardless of the probative value that may be attributed to an affidavit under the national law of a member state (here, German law).
  • However, the General Court found that the Board of Appeal had not carried out a proper examination of the evidence produced by Inter-Union, as it had not examined the content of the affidavit in conjunction with the further evidence provided, such as advertisements, catalogues and articles on product testing published in Stiftung Warentest’s magazine test. The General Court differentiated the facts of the present case from the decision in BIODANZA (Case T-298/10), stating that, unlike in that case, further items of evidence from various sources had been produced and could confirm the veracity of the information given in the affidavit.
  • As an independent basis for the annulment of the Board of Appeal's decision, the General Court considered that the board had carried out an incorrect assessment of the probative value of the evidence, in particular of articles on product testing published in Stiftung Warentest’s magazine test. According to the court, these articles on product testing have a specific nature and function, compared to ordinary advertising material: the function of the articles is to present advantages and disadvantages of a product and to compare it with identical products of various competitors in the interest of the consumers. Therefore, the articles relate to products which are already on the market, and contain information on the average price of the products on the market. Consequently, and irrespective of the extent of the distribution of the articles of Stiftung Warentest’s magazine test, the articles by their very nature concerned goods marketed under the earlier mark and provided information on the extent of its use. Accordingly, they had probative value.

On the one hand, the decision of the General Court followed well-established case law on the requirements for proving genuine use. On the other, it accurately assessed the factual background of the present case as regards the probative value of the affidavit and whether its content was supported by other evidence by differentiating it from previous case law. Further, in another careful analysis, the General Court correctly assessed the probative value of articles from Stiftung Warentest’s magazine test – an independent product comparison for the benefit of consumers – by distinguishing it from ordinary advertising material. Nevertheless, given the long procedural background of the dispute, it is not unlikely that the case will end up before the Court of Justice of the European Union.

Florian Schwab, Boehmert & Boehmert, Munich

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