General Court: Board of Appeal not 'too demanding' with regard to proof of use

In Nanu-Nana Joachim Hoepp GmbH & Co KG v Office for Harmonisation in the Internal Market (OHIM) (Case T-196/13, July 16 2014), the General Court has considered how to assess the evidential value of sworn statements for the purposes of furnishing proof of genuine use of a Community trademark (CTM). 

Lina Stal-Florez Botero is the registered proprietor of CTM No 5205125 for the figurative sign shown below in respect of goods in Classes 16, 20 and 24 of the Nice Classification:

Nanu-Nana Joachim Hoepp GmbH & Co KG applied for a declaration of invalidity of the CTM on the basis that it was confusingly similar to its earlier German registration for NANA (covering, among other things, identical goods) pursuant to Article 8(1)(b) of the Community Trademark Regulation (207/2009), in conjunction with Article 53(1)(a).

In the proceedings before the Cancellation Division of OHIM, Botero requested that Nanu-Nana prove use of its mark under Article 57(2) and (3). The Cancellation Division found that genuine used had not been proved and rejected Nanu-Nana’s invalidity’s application. Nanu-Nana appealed and the Board of Appeal dismissed the appeal. As part of its reasoning, the Board of Appeal held that:

• the “affidavits and photos submitted by [Nanu-Nana] could not prove the time and extent of use of the mark in respect of the goods depicted […] and the specific categories of goods within the classes concerned”; and
• the photos showed use of the sign NANA on labels and stickers in a uniform get-up attached to the goods (see examples below); “it was not totally certain that the relevant public confronted with the product labels and stickers […] would actually perceive them as a trademark designating a specific product, rather than as a company or shop name”.

Examples of Nanu-Nana’s evidence filed at OHIM:

Nanu-Nana appealed the decision to the General Court, arguing, among other things, that:

1. the affidavits constituted a sufficient method of giving evidence before the office as recognised by Article 78(1)(f) of the regulation, and the board had made “too high demands” in relation to proof of use; and
2. the average consumer would not perceive use of NANA on labels and stickers as use of a company or shop name because:

• NANA was not identical to the company or shop name;
• the sign is always affixed to the goods; and
• the mark was generally followed by the ® symbol.  

With regard to the first plea, the court essentially distinguished between the admissibility of affidavits as a means of giving evidence (which was not in question) and the actual assessment of their evidential value to furnish proof of genuine use.

The court restated the principle that evidence of use must concern the place, time, extent and nature of use of the earlier mark (Rule 22(3) of the Community Trademark Implementation Regulation (2868/95)) and that there is genuine use where a trademark is used in accordance with its essential function (ie, as a badge of origin). The evidential value of Nanu-Nana’s statements depended on the credibility and veracity of the information provided, taking into account the person from whom the document originated, the circumstances in which it came into being, the addressees, and whether the document was sound and reliable.  

Analysing Nanu-Nana’s affidavits, the court noted as follows:

1. The affidavits originated from an employee of Nanu-Nana’s group and, as such, were of “less evidential value of those of third parties” and could not, “on their own, constitute sufficient proof of use of the mark”.
2. No evidence was provided to support the turnover figures. Nanu-Nana’s undated photos showed at best the nature and place of use of the earlier mark, but not the time and extent.
3. The content was not sufficiently specific to draw conclusions on the time and extent of use of the earlier mark. The affidavits indicated the start date of use of the mark generally, the fact that it had been used for thousands of goods in the relevant classes, the approximate quantity of types of goods per class and the turnover per class. The exercise required is much more granular. It is “fundamental to establish the specific categories of goods for which the mark has in fact been put to use”. Where the categories of goods protected by a mark are broad, proof of use needs to relate to the individual sub-category(ies), as protection will be afforded only to those subcategory(ies) in respect of which the mark has actually been used.
4. The affidavits enclosed no invoices, catalogues or newspaper advertisements, which should have been easy to obtain. Nanu-Nana stated that it was not unable to submit invoices because its sale slips and delivery notes did not bear the earlier mark. The court noted that this did not preclude Nanu-Nana from submitting them, as they would have shown the types of goods marketed and the extent and duration of the marketing of the same.

In light of the above, the court upheld the Board of Appeal’s finding that Nanu-Nana’s affidavits “were not conclusive either in themselves or in combination with the other items or evidence”, and stated that the board had not been too demanding in its assessment of the veracity and credibility of the evidence submitted.

The court glossed over Nanu-Nana’s second plea, as it considered the board’s doubts as to whether the use depicted in the photos constituted use ‘in relation to goods’ irrelevant. This was because, even if the photos had provided evidence of the nature of use of the earlier mark (on which the court did not opine), the lack of evidence of time and extent of use would not have been remedied.

The court’s view on this point would have been welcome. The board’s doubts are based on the fact that Nanu-Nana’s labels and stickers have a uniform get-up across a wide range of products. From a review of Nanu-Nana’s evidence and website, Nanu-Nana appears to be selling ‘white label’ goods. The only indication of origin on the individual items appears to be the label. It should follow that, when the relevant public is confronted with NANU-NANA on the shop front, it is likely to understand that mark to relate to the shop name and the retail services provided in the shop. However, once the public is in the shop and sees individual products with the label NANA, in the absence of other indicators of origin, it is difficult to see how the relevant public would not perceive NANA as being used ‘in relation to the goods’ to which the labels and stickers are affixed.

Cam Gatta, Redd Solicitors LLP, London