Genuine use does not mean large turnover, CFI confirms

In Sunrider Corporation v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has confirmed that, in order to determine whether a trademark has been put to genuine use, an overall assessment has to be carried out - the turnover of sales is only one factor to be taken into account.

Sunrider Corporation sought to register VITAFRUIT as a Community trademark in Classes 5, 29 and 32 of the Nice Classification. Juan Espadafor Caba, a Spanish individual, opposed the application on the basis of his VITAFRUT mark registered in Spain in 1960 for goods in Class 32. As proof of use of VITAFRUT in the five years prior to the publication of the VITAFRUIT mark in the Community Trademark Bulletin, Espadafor Caba submitted (i) six bottle labels on which his mark was displayed, and (ii) 10 invoices and orders dated within the period considered. The OHIM Opposition Board and the Board of Appeal both upheld the opposition. Sunrider appealed to the CFI, claiming that Espadafor Caba had not made sufficient use of his mark to enforce rights in it.

The CFI dismissed the appeal. It rejected the allegation that the Board of Appeal had misinterpreted the notion of genuine use as defined in Articles 15(1) and 43(2) of the Community Trademark Regulation. The CFI agreed with Sunrider that the party opposing the registration of a trademark has to prove that the earlier mark has been put to genuine use. However, the CFI stated that the purpose of this requirement is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trademark protection to cases where large-scale commercial use has been made of a mark. Instead, the evidence must establish that the use of the mark was real and public, and not for the sole purpose of preserving the rights conferred by registration.

The CFI stated that in order to determine whether the commercial exploitation of the mark is real, an overall assessment of several criteria has to be carried out. These criteria include:

• the commercial volume of the overall use;
  
  
• the length of time that the mark has been used; and
  
  
• the frequency of use.

The CFI added that there is some interdependence between these factors.

Although the sales relating to the use of the VITAFRUT mark were comparatively low and the invoices presented were made out to a single customer, the CFI found that it still constituted use that objectively was not merely token, minimal or notional for the sole purpose of preserving the rights conferred by registration.

This judgment (together with the HIPOVITON/HIPPOVIT decision issued on the same day - see OHIM breached rules in HIPOVITON opposition) shows that the owner of a mark that is used in relation to goods that have a relatively low turnover may still oppose the registration of a similar mark. Use of the earlier mark does not need to be quantitatively significant to be deemed genuine.

For a discussion of another case involving Sunrider, see Parties to share costs where they jointly end proceedings, court rules.

Julia Meuser and Beatrice Stange, Freshfields Bruckhaus Deringer, Hamburg