Genuine use of COLORIS mark established, says CFI
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In Esber SA v Office for Harmonization in the Internal Market (OHIM) (Case T-353/07, November 30 2009), the Court of First Instance (CFI) has held that use of the earlier trademark COLORIS had been properly demonstrated.
On August 20 2002 Spanish company Esber SA applied for the registration of the figurative mark COLORIS as a Community trademark in respect of goods in Classes 2 (including "paints, lacquers and dyes") and 16 (including "publications; books, magazines, periodicals") of the Nice Classification.
On October 31 2003 Allios SA lodged an opposition based on the earlier word mark COLORIS, registered in France for goods in Class 2. The earlier mark was assigned to Coloris Global Coloring Concept during the course of the proceedings. The Opposition Division of OHIM upheld the opposition for the goods in Class 2, but not for the goods in Class 16.
Esber appealed, arguing that OHIM had erred in examining the evidence of genuine use of the earlier mark provided by Coloris. On June 28 2007 the First Board of Appeal of OHIM dismissed the appeal, considering that genuine use of the earlier mark had been demonstrated. Esber appealed to the CFI.
Before the CFI, Esber argued that in the evidence of use provided by Coloris, the earlier mark never appeared alone, but only in complex forms such as COLORIS GCC, COLORIS GLOBAL COLORING CONCEPT and COLORIS GCC GLOBAL COLORING CONCEPT, all with the image of a globe. The CFI found that:
- these representations did not alter the distinctive character of the mark as registered, as the additional elements were written in smaller characters; and
- some of the additional elements were descriptive.
The CFI further held that the image of the globe was not particularly creative or unusual and, consequently, did not alter the distinctiveness of the mark.
The CFI concluded that Coloris had successfully demonstrated genuine use of the earlier mark. In particular, the CFI considered that various invoices provided by Coloris and a declaration by a third party were relevant to prove use of the earlier mark.
The action was thus dismissed.
The decision, which is in line with the usual approach of the EU authorities, is very much based on the factual background of the case. To demonstrate genuine use of an earlier mark, the trademark owner must meet the high standards of OHIM and the EU courts. In the present case, the evidence of use provided by Coloris clearly met those standards: the COLORIS mark was the most visible element and the additional elements were not, on their own, particularly distinctive.
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris
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