Lack of genuine use fatal for opponent in SCHUHPARK Case

European Union
In Schuhpark Fascies GmbH v Office for Harmonization in the Internal Market (OHIM) (Case T-183/08, May 13 2009), the Court of First Instance (CFI) has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had dismissed an opposition against the registration of the mark JELLO SCHUHPARK on the grounds that the opponent had failed to prove that its mark had been put to genuine use.
In August 1999 Leder & Schuh AG applied for the registration of the figurative mark JELLO SCHUHPARK as a Community trademark (CTM) for goods in Classes 18, 21, 25 and 26 of the Nice Classification. In December 2000 Schuhpark Fascies GmbH opposed the application on the grounds that there was a likelihood of confusion with its earlier German trademark SCHUHPARK in Class 25. In October 2006 the Opposition Division of OHIM upheld the opposition, except in relation to “hair clips” in Class 26. In November 2006 Leder & Schuh appealed to the Board of Appeal of OHIM, which reversed the decision of the Opposition Division. The board took the view that use of the earlier mark had not been sufficiently proved. Schuhpark appealed to the CFI.
In support of its appeal, Schuhpark invoked a single argument in respect of the violation of Article 43(2) and 43(3) of the Community Trademark Regulation (40/94), claiming that its SCHUHPARK mark had been put to genuine use during the relevant five-year period. It referred to a November 2002 decision of the Board of Appeal in parallel proceedings concerning the application for the registration of JELLO SCHUHPARK, which had been in its favour. In addition, it claimed that its mark had been used in advertisements and leaflets, as well as on plastic bags. It submitted photos of labels bearing the mark that it had marketed during the relevant period. Schuhpark also presented a sworn statement from a supplier confirming that the latter had delivered shoes bearing the mark to Schuhpark during the relevant period. Schuhpark also referred to decisions of the Landgericht München (the Regional Court of Munich), the Oberlandesgericht München (the Higher Regional Court of Munich) and the Bundesgerichtshof (the German Federal Court of Justice).
The CFI first noted that:

  • an earlier mark is protected only if it has been put to genuine use; and 
  • in opposition proceedings, an applicant may request that the proprietor of the earlier mark furnish proof that the mark has been put to genuine use in the territory in which it was protected during the five years preceding the date of publication of the opposed CTM application.
More specifically, the evidence of use should show the geographical scope, duration, extent and nature of use of the earlier mark. The CFI added that:
  • the mark should be used in commerce; and
  • a mark is put to genuine use where it is used to guarantee the origin of the goods or services for which registration was sought so as to create or maintain an outlet for these goods and services and distinguish them from those of other undertakings. 
Following this logic, the CFI underlined that the link between the mark and the goods had to be examined to establish the rights conferred by the registration. To determine whether the earlier mark had been put to genuine use, it was necessary to take into account all the relevant concrete and objective factors which showed effective and sufficient use of the mark in the relevant market (eg, packaging, labels, price lists, catalogues, receipts, photos and advertisements).
The CFI further stated that the board had correctly held that the decision of the Oberlandesgericht did not allow the conclusion that the earlier mark was put to genuine use because the evidence provided by Schuhpark did not show the geographical scope, duration, extent or nature of use of the mark.
The CFI went on to observe that the earlier mark was equivalent to the company name or trade name of Schuhpark. The CFI concluded that the mark enabled consumers to identify the shop in which they purchased the shoes, but did not distinguish Schuhpark's goods from those of others.
Finally, the CFI reiterated that the legality of decisions of the Board of Appeal should be assessed based only on the Community Trademark Regulation, as interpreted by the relevant Community judge, and not on previous case law. The CFI further held that it was not its role to re-examine the facts when new evidence was presented before it for the first time.  

The action was thus dismissed.

In this case, Schuhpark’s inability to show genuine use of its earlier mark proved to be fatal. Had Schuhpark provided sufficient evidence, the CFI would have considered whether there was a likelihood of confusion between the marks. However, without such evidence, Schuhpark had no basis for opposition. The decision is a salutary reminder that trademark owners should keep detailed records of use of their marks. 
Chris McLeod and Myrsini Feliou, Hammonds LLP, London

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