HIWATT owner loses opposition hearing

European Union

In Fernandes v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance has ruled that the plaintiff's use of the registered mark HIWATT does not constitute genuine use and therefore the plaintiff may not oppose the registration of the sign by other parties.

Richard Harrison applied to register 'Hiwatt' as a Community trademark for amplifiers. Kabushiki Fernandes opposed the application on the grounds that, for over five years, he has been the registered owner of HIWATT in Germany, France and Italy covering identical goods. Harrison requested Fernandes to provide evidence of genuine use of the mark. Fernandes submitted an English language HIWATT amplifier catalogue made available at a Frankfurt trade fair in the years 1993 to 1997.

The OHIM Opposition Division held that this evidence did not constitute 'genuine use' as defined by the Community Trademark Directive. The Board of Appeal affirmed.

On appeal to the European Court of First Instance, the court again affirmed the Opposition Division's finding. The court stated that:

  • Fernandes's use of the HIWATT mark amounted to token use;

  • Fernandes's use of 'Hiwatt' as a company name could not be considered trademark use;

  • the mark had not been used in a substantial part of the territories where it is registered; and

  • the only relevant fact proved by the catalogues was that amplifiers bearing the mark existed. They did not even prove that goods bearing the mark were exhibited at the annual trade fair.

Accordingly, the court ruled that Fernandes had failed to show even minimal use of the mark and dismissed the case with costs against Fernandes.

For discussion of another EU case involving the issue of genuine use, see ECJ defines trademark 'genuine use'.

Chris McLeod, McDermott Will & Emery, London

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