General Court: solid and objective evidence is necessary to prove genuine use

In Globosat Programadora Ltda v Office for Harmonisation in the Internal Market (OHIM) (Case T-348/12, March 12 2014), the General Court has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had dismissed an opposition filed by the owner of the Portuguese figurative trademark SPORTV against the registration of the mark SPORT TV INTERNACIONAL. The court found that the owner of the SPORTV mark had not proven genuine use of the mark during the relevant five-year period, as required by Articles 42(2) and (3) of the Community Trademark Regulation (207/2009) and Rule 22(3) of the Community Trademark Implementation Regulation (2868/95). 

In late 1998 the figurative trademark SPORTV was registered in Portugal in Classes 38 and 41 of the Nice Classification for, among other things, the broadcasting and production of television programmes.

Ten years later, in 2008, Sport TV Portugal SA applied for the registration of SPORT TV INTERNACIONAL as a Community trademark (CTM) with OHIM. The application covered an extensive list of services in Classes 38 and 41. The application was published in February 2009.

On June 2009 Brazilian company Globosat Programadora Ltda filed a notice of opposition based on its earlier SPORTV mark. The Opposition Division rejected the opposition. Globosat filed an appeal, which was dismissed by the Fourth Board of Appeal of OHIM.

Globosat appealed to the General Court, alleging infringement of Articles 42(2) and (3) of Regulation 207/2009 and Rule 22(3) of Regulation 2868/95. These provisions refer to the proof of genuine use of the earlier trademark on which an opposition is based during the period of five years preceding the date of publication of the CTM application, and the way in which such evidence shall be provided.

In the course of the proceedings, Globosat presented the following documents in order to prove genuine use of the earlier mark:

• copies of online and print articles taken from a website, a magazine and a newspaper;
• two extracts printed from the website 'tvcabo.pt';
• a sworn declaration by its lawyers;
• copies of television programming schedules published in magazines; and
• a DVD containing four television advertisements.

With regard to genuine use, the court relied on earlier decisions, including Sunrider v OHIM (VITAFRUIT) (Case T-203/02) and MFE Marienfelde v OHIM (HIPOVITON) (Case T-334/01), and stated:

“When assessing whether use of a trademark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the products or services protected by the mark, the nature of those products or services, the characteristics of the market and the scale and frequency of use.”

In light of this principle, the court rejected Globosat's plea, stating that:

• The copies of newspapers dealt with the distribution of the television channels in the United States and the extract from the magazine concerned the Brazilian market. Therefore, they could not be taken into account with a view to establishing genuine use of the earlier mark in Portugal.
• The sworn declaration of Globosat's lawyers, which may be admitted as a means of evidence pursuant to Article 78(1)(f) of Regulation 207/2009, was not supported by other evidence as required by the cited case law.
• Some copies of the television programming schedules did not relate to the relevant period of proof and others, including the websites extracts, showed only that some programmes with Globosat's mark were broadcast by satellite. Such circumstances did not present any information about the interest the Portuguese television market had in Brazilian sport.
• The DVD advertisements merely showed the mark on the presenters' clothing and the only link with the relevant territory (Portugal) was the mention of the local time in Lisbon at the end of each advertisement.

In the court’s view, the evidence did not include information which could be considered to be solid and objective evidence of effective and sufficient use of the trademark on the Portuguese market. Consequently, the court concluded that the Board of Appeal had correctly found that the applicant had not proven genuine use of the earlier mark to the required legal standard. 

The main issue in this case is particularly relevant within the CTM system: how to prove genuine use of an earlier national mark to prevent the registration of a CTM. The decision shows that it is indispensable to have solid and objective evidence showing that the mark was placed on the market with respect to the products and services for which it is registered.

The court relied on a decision which recognised that the evidence provided was sufficient (VITAFRUIT) and a decision which determined that further evidence was needed (HIPOVITON). In contrast, in the present case the court does not seem to have analysed in detail the peculiarities of the market at issue. Obviously, such burden lay on Globosat, but the analysis of the impact of the use of the mark must be made by the court.

In VITAFRUIT, although the extent of use of the earlier mark was limited (the evidence consisted of about 10 invoices, relating to sales to a single customer in Spain of 3,516 bottles of concentrated fruit juices, amounting to approximately €4,800, over a period of 11 months), the court had considered that this evidence was sufficient to demonstrate genuine use.

In HIPOVITON, the court had considered that, in order to determine whether an earlier trademark had been put to genuine use, the turnover achieved and the quantity of product sold under the earlier mark could not be assessed in absolute terms but, rather, in relation to other relevant factors. The smaller the commercial volume of the mark’s exploitation is, the more necessary it is for the mark owner to produce additional evidence to dispel possible doubts as to its genuineness.

However, in the present case, the court seems to have disregarded, among other things, the fact that Portugal and Brazil have a close relationship where sport is concerned. Although the exploitation of the brand in the Brazilian market was irrelevant within the context of an objective analysis, from a subjective point of view it could have been considered as a genuine intention to use the mark in Portugal.

The decision suggests that, to assess genuine use, the court relies on increasingly objective criteria - the assessment of whether a mark has been put to genuine use seems to be strictly dependent on the evidence produced by the mark owner.

Manuel Lopes Rocha, Juliana Marcondes and Carolina Leão d’ Oliveira, PLMJ - AM Pereira Sáragga Leal Oliveira Martins Júdice E Associados - Sociedade De Advogados - RL, Lisbon