Guidance on proof of use of earlier mark in invalidity actions issued

European Union
In Harwin International LLC v Office for Harmonization in the Internal Market (OHIM) (Case T-450/07, June 12 2009), the Court of First Instance (CFI) has overturned a decision of the Board of Appeal of OHIM in an invalidity action. The case centred on the question of whether the owner of an earlier trademark must prove the use of its mark only if that use is expressly challenged by the owner of the trademark which is the subject matter of an application for a declaration of invalidity.

Harwin International LLC sought to register the figurative mark PICKWICK COLOUR GROUP as a Community trademark for “clothing, footwear and headgear” in Class 25 of the Nice Classification. Cuadrado SA submitted an application for a declaration of invalidity on the basis of its earlier word and figurative marks PICK OUIC for goods in Class 25.

The Cancellation Division of OHIM granted the application for a declaration of invalidity. Harwin appealed, arguing that the Cancellation Division had not considered whether Cuadrado had proved use of its trademarks.

The Second Board of Appeal of OHIM dismissed the appeal. The board found that the Cancellation Division had correctly concluded that it was not entitled to assess whether Cuadrado's earlier marks had been put to genuine use given that Harwin had not made an express request for proof of use during the cancellation proceedings in accordance with Article 56(2) and (3) of the Community Trademark Regulation (40/94) (now Article 57(2) and (3) of Regulation 207/2009).

The CFI annulled the decision of the Second Board of Appeal, noting that:
  • Cuadrado had included evidence concerning the use of its earlier marks in its application for a declaration of invalidity;
  • Harwin had stated that the evidence was insufficient to prove genuine use in its observations on the application for a declaration of invalidity to OHIM; and
  • Cuadrado had produced additional documents on proof of use in its response to Harwin’s observations.
The CFI held that the literal interpretation of the phrase “if the proprietor of the Community trademark so requests”, used in Article 56(2) of Regulation 40/94, must be understood as referring to a request such as that set out in Harwin’s observations on the application for a declaration of invalidity. The CFI noted that the request had been fully understood by Cuadrado, as it had produced additional evidence to reply to Harwin’s observations.

On this basis, the CFI held that given that the use of the earlier mark was the subject of an exchange of arguments between the parties, the board had infringed Article 56(2) and (3) of Regulation 40/94 in holding that the issue of the genuine use of the earlier marks did not have to be examined by the Cancellation Division.
Alistair Payne, Matheson Ormsby Prentice, Dublin

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