No de minimis rule for establishing proof of genuine use

European Union
In New Yorker SHK Jeans GmbH & Co KG v Office for Harmonisation in the Internal Market (OHIM) (Case T-415/09, September 29 2011), the General Court has considered the issue of what constitutes sufficient proof of genuine use of an earlier national mark in the context of opposition proceedings.
In 2003 German company New Yorker SHK Jeans GmbH & Co. KG filed a Community trademark (CTM) application for the word mark FISHBONE, which covered goods in Classes 18 and 25 of the Nice Classification. The application was opposed by Greek company Vallis K - Vallis A & Co OE based on its earlier Greek figurative trademark (Registration 121579), filed and used since 1994 and registered in 1997 for goods in Class 25:
The opposition was upheld at first instance, and was partially rejected for the Class 18 goods by the Board of Appeal of OHIM.
On appeal, the General Court focused primarily on the evidence of use of the earlier mark - namely, the extent of the use and whether it constituted sufficient and genuine use.
In particular, the court clarified that, while submission deadlines must be respected, nothing in the Community Trademark Regulation (207/2009) prohibits OHIM from taking into account evidence submitted after the expiry of the deadline. It also underlined the board’s discretion to base its decision on the grounds that it deems appropriate, without being obliged to address all the arguments set forth by the parties.
The court further confirmed that the ratio legis of the requirement that the earlier mark must have been put to genuine use if it is to be used in opposition to a CTM application is to restrict the number of conflicts between two marks, insofar as there is no sound economic reason resulting from active functioning of the mark on the market. Pursuant to Rule 22(3) of the Community Trademark Implementation Regulation (2868/95), evidence of use must concern the place, time, extent and nature of use of the earlier mark. In particular, the mark forming the legal basis of the action must have been used publicly and outwardly. Moreover, genuine use of a mark cannot be proved by means of probabilities or suppositions.
Examining the evidence in the present case, the court held that invoices that did not contain the exact trademark (ie, they included the word ‘fishbone, but not the expression ‘fishbone beachwear’) had to be taken into consideration for the purposes of showing proof of genuine use, as the absence of the term ‘beachwear’ did not affect the distinctive character of the mark.
Moreover, the court considered that catalogues and photographs submitted by the applicant represented corroborative evidence of use of the earlier mark, even though they made no direct reference to the mark.
Further, the court held that a low volume of goods marketed under an earlier mark may be offset by a high intensity or a certain constancy of use over time. The court pointed out that the turnover and the volume of goods sold under an earlier mark cannot be assessed in absolute terms, but must be looked at in relation to other relevant factors, such as:
  • the volume of business;
  • the production or marketing capacity, or the degree of diversification of the undertaking using the mark; and
  • the characteristics of the products or services on the relevant market.
Accordingly, use of the earlier mark need not always be quantitatively significant in order for it to be deemed genuine. There is no de minimis rule for establishing proof of genuine use and small-scale use may be compatible with actual market presence.
In light of the above, the court held that the invoices, catalogues and photographs submitted by the applicant were sufficient to prove genuine use of the earlier mark.
Finally, turning to the comparison of the marks, the court found that there was a certain degree of similarity between them; the verbal element ‘beachwear’ in the earlier mark was deemed to be descriptive and, therefore, insufficient to differentiate the marks and prevent a risk of confusion among the public.
The action was thus dismissed.
Eleni Lappa, IPWORK.GR, Athens

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