General Court: six invoices insufficient to prove genuine use for everyday consumer goods

In Lidl Stiftung & Co KG v Office for Harmonisation in the Internal Market (OHIM) (Case T-300/12, October 8 2014), the General Court has annulled a decision of the Second Board of Appeal of OHIM, finding that the latter had erred in ruling that A Colmeia do Minho Lda had proved the genuine use of its national Portuguese trademarks GLOBO for a number of goods in Classes 29 and 30 of the Nice Classification.

In May 2008 German company Lidl filed an application for the registration of the figurative mark FAIRGLOBE as a Community trademark for goods in Classes 29 and 30. Portuguese company Colmeia do Minho lodged an opposition against this application based on its Portuguese word marks GLOBO, which covered, among others, goods in Classes 29 and 30. At Lidl's request, Colmeia do Minho was required to provide proof of genuine use of its earlier marks; Colmeia do Minho stated that the six invoices that it had submitted during the course of the proceedings were sufficient to prove that its trademarks had been put to genuine use in Portugal.

The Opposition Division of OHIM was of the opinion that, even though these invoices failed to prove genuine use for all the goods covered by the earlier trademarks, genuine use had been established for some of them. The Opposition Division found that there was a likelihood of confusion between the marks concerning the goods which were identical or similar, and thus partially upheld the opposition.

The Second Board of Appeal was essentially of the same opinion: it stated that the six invoices referring to the word mark GLOBO proved that the earlier trademarks had been put to genuine use, but only for some of the goods.

The General Court did not share this view and annulled the Board of Appeal's decision. The General Court was of the opinion that Colmeia do Minho had not demonstrated that its earlier trademarks had been put to genuine use for goods in Classes 29 and 30, and that OHIM had made some legal errors in applying the concept of 'genuine use' in the present case. Although it was undisputed that there had been some sort of use, this use could not be deemed to be genuine due to the following reasons:

• the invoices were not legible and translations were missing;
• as regards the extent of use, OHIM had erred in taking into account the complete sales figures in the invoices, as they also referred to non-relevant goods;
• the sales figures relating to the inexpensive, everyday consumer goods were too low to demonstrate genuine use and, therefore, were not sufficient to exclude the possibility that use was merely token; and
• besides these six invoices, Colmeia do Minho had failed to submit any other proof of use, such as copies of packaging, reports on turnover, price lists, a solemn declaration, catalogues, brochures and advertising material, to provide further information as to the extent and nature of use, among other things.

As the court found that Colmeia do Minho had failed to prove that its earlier trademarks had been put to genuine use, the court had no reason to rule on the alleged likelihood of confusion.

Once again, this decision clearly shows that not any kind of use of a trademark will be considered as genuine use. There is an interdependence between the volume of the sales and the nature and characteristics of the registered goods and the relevant markets. The more moderate the prices of the relevant goods, the higher the requirements regarding their sales figures and markets. A party under obligation to furnish proof of use of its mark would be well advised to not only submit invoices, but also to explain the characteristics of the relevant market and economic sector, and to substantiate the alleged use by submitting further proof of use, such as price lists, sales reports, brochures and catalogues. This decision is in line with other recent decisions regarding proof of use, according to which the requirements to prove genuine use for everyday consumer goods are high and increasing.

Tanja Hogh Holub, Beiten Burkhardt Rechtsanwaltsgesellschaft mbH, Munich