Genuine use requires actual proof, CFI confirms

In Vitakraft-Werke Wührmann & Sohn GmbH & Co KG v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has ruled that the OHIM Board of Appeal erred in accepting evidence in the form of catalogues as proof of trademark use. The CFI confirmed that it is not sufficient for genuine use to appear probable or credible - actual proof of use must be given.

German pet food and health product manufacturer Vitakraft-Werke Wührmann & Sohn GmbH & Co KG sought to register VITAKRAFT as a Community trademark in Classes 1, 3, 4, 12 and 19 of the Nice Classification. Krafft SA, a company established in Spain, opposed the application on the basis of various Spanish registrations for the mark KRAFFT covering the same classes. Vitakraft requested proof of use in relation to the goods in Classes 4, 12 and 19, for which Krafft submitted 18 catalogues relating to various products from its range. The OHIM Opposition Division upheld the opposition in Classes 1 and 3 but rejected the opposition for Classes 4, 12 and 19 on the grounds that Krafft was unable to prove sufficient use. Both parties appealed against the decision.

The Board of Appeal partially annulled the decision of the Opposition Division and held that Krafft had shown genuine use for some of the goods in Classes 4 and 19. The Board of Appeal considered that it had no reason to doubt that the catalogues produced by Krafft reflected the fact that it had marketed the relevant products under the mark. Therefore, the board upheld the opposition for all the goods in Classes 1 and 3, as well as for some of the goods in Classes 4 and 19.

The CFI reversed. It made reference to the judgment in Ansul where the European Court of Justice established that there is genuine use of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Furthermore, genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. It is also clear that genuine use of a trademark requires that the mark, as protected in the relevant territory, be used publicly (see ECJ defines trademark 'genuine use' in landmark case).

The CFI then stated that it is not sufficient for genuine use to appear probable or credible. Instead, actual proof of that use must be given. As far as the evidence in this case was concerned, the catalogues submitted to the Board of Appeal did not establish:

• whether the catalogues were distributed to potential customers in Spain;
  
  
• the extent of any distribution; and
  
  
• the volume of sales for goods bearing the mark.

The catalogues could, at most, make it probable or credible that goods bearing the KRAFFT mark were sold or, at least, offered for sale in Spain, but they could not prove this fact. While the CFI agreed that there was a likelihood of confusion between the conflicting marks, it found that the board had erred in law by regarding the catalogues as sufficient proof of use of the marks for some of the goods in Classes 4 and 19.

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

Henrik Lindström and Pär Leander, Magnusson Wahlin Qvist Stanbrook Advokatbyrå KB, Stockholm