Opponent fails to provide solid and reliable proof of use of earlier mark

In Biotronik SE & Co KG v Office for Harmonisation in the Internal Market (OHIM) (Case T-416/11, October 25 2013), the General Court has upheld a decision of the Second Board of Appeal of OHIM finding that the evidence submitted as proof of use of an earlier trademark could not be regarded as proof of genuine use.

On October 11 2006 Cardios Sistemas Comercial e Industrial Ltda filed an application for the registration of the word mark CARDIO MANAGER in Class 9 (“software for measuring, checking, medical, odontological and scientific apparatus; software for not invasive heart examination and heart apparatus”) and Class 10 (“multicardiographs, digital recorder for medical use, event recorder for medical use, ECG recorder, blood pressure and electrocardiographic analysers and blood pressure monitors”) of the Nice Classification. The trademark application was published on January 21 2008.

On March 26 2008 Biotronik SE & Co KG filed a notice of opposition based on Article 8(1)(b) of the Community Trademark Regulation (40/94) (now Article 8(1)(b) of the Community Trademark Regulation (207/2009)). The opposition was based on the earlier word mark CARDIOMESSENGER, registered in Germany on November 28 2002 under No 30245124, which designates, among others, goods in Classes 9 and 10:

• Class 9: “electric and electronic apparatus and instruments for measuring, inputting, storing, displaying, analysing, processing, generating and transmitting data and signals; monitors, data processing equipment, computers, computer programs; parts for the aforesaid goods and attachments therefor, included in Class 9; programming and testing equipment”;
• Class 10: “surgical and medical apparatus and instruments; medical apparatus for therapeutic purposes, electro-medical apparatus and parts therefor, in particular electronic apparatus for the electrostimulation of tissue and nerves; circulation relieving apparatus, diagnostic apparatus; testing apparatus for medical purposes; patient monitoring apparatus and medical measuring and regulating apparatus; artificial organs, endoprostheses, implants of artificial materials”.

On October 23 2008 Cardios made a request, in accordance with Articles 43(2) and (3) (now Articles 42(2) and (3)) of the regulation), that Biotronik provide proof that the earlier trademark had been put to genuine use.

On April 8 2009 Biotronik submitted, among other things, various extracts from newspapers and medical journals, instruction manuals for a device known as the 'CardioMessenger' and printouts from Biotronik’s website, as well as examples of packaging dating from the relevant period, each of which bore the mark CARDIOMESSENGER.       

By decision of April 30 2010 the Opposition Division of OHIM rejected Biotronik’s opposition in its entirety on the ground that Biotronik had not demonstrated genuine use of the earlier trademark CARDIOMESSENGER in the period in respect of which Biotronik had to prove genuine (ie, January 21 2003 to January 20 2008).

On June 23 2010 Biotronik filed a notice of appeal with OHIM together with additional evidence intended to demonstrate genuine use of the earlier trademark, including a formal written statement made by one of Biotronik’s vice-presidents.

By decision of May 27 2011 the Second Board of Appeal of OHIM dismissed the appeal, stating that the evidence submitted by Biotronik, whether assessed on an individual basis or as a whole, could not be regarded as proof of genuine use of the earlier trademark. Even though Biotronik had shown that it had manufactured, and to some extent marketed, a device known as the 'CardioMessenger' that can be used by patients suffering from heart conditions, it had not produced – in relation to Germany, the country of reference – solid evidence concerning, in particular turnover or advertising, or the nature and extent of the use, such as invoices, price lists, catalogues or the like.

On July 29 2011 Biotronik filed a notice of appeal with the General Court against the Second Board of Appeal of OHIM’s decision, alleging infringement of Articles 42(2) and (3) of the regulation, read in conjunction with Rule 22(3) and (4) of the Community Trademark Implementation Regulation (2868/95), claiming that the Board of Appeal had erred in its assessment of the material provided as evidence of genuine use.

The General Court stated that the proof of use must relate to “the place, time, extent and nature of use of the opposing trademark” pursuant to Rule 22(3). There is “genuine use” of a trademark where it is used publicly and outwardly; however, genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark.

For the purposes of assessing whether use of the earlier trademark was genuine, the General Court stated that regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly:

• whether such use was viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark;
• the nature of those goods or services;
• the characteristics of the market; and
• the scale and frequency of use of the mark.

An overall assessment had to be carried out and genuine use had to be demonstrated by solid and objective evidence of actual and sufficient use of the trademark on the market concerned.

As to the evidence produced by Biotronik concerning the use of the trademark CARDIOMESSENGER in Germany, the General Court stated that it could not be regarded as proof of genuine use of the earlier trademark. In this respect, Biotronik had submitted the following documents:

• A presentation entitled “Product Roadmap Health Services 2003” written by one of Biotronik’s vice-presidents - the document provided no information concerning the fact that the CardioMessenger device was placed on the market in Germany in 2003. Further, Biotronik did not contest before the General Court the finding of the Board of Appeal that that document was intended for in-house purposes only.
• Scientific publications referring to the CardioMessenger device - the publications did not contain any specific details regarding the volume of sales, advertising or the extent of use of the CardioMessenger product.
• Extracts from an instruction manual for the CardioMessenger product, a number of internet pages and packaging for products intended for a CardioMessenger kit - this evidence did not provide any additional solid evidence of use of the trademark.
• A formal written statement made by Biotronik indicating the number of patients worldwide who, between 2000 and 2009, were provided with the CardioMessenger device as an integral part of a 'Home Monitoring' system and the percentage of those patients who were in Germany - the statement failed to set out essential information such as: the market price for the devices; the nature of the distributors; the market share of the product; sales and advertising turnover; the sales outlets in Germany; and the existence of customers. Further, the General Court stated that value of Biotronik’s statement was lower than the value of a statement from an independent source.

Against this background, the General Court stated the Board of Appeal of OHIM had been right in finding that proof of genuine use of the trademark CardioMessenger had not been produced, and Biotronik’s appeal was rejected as unfounded.

Nina Ringen, Rønne & Lundgren, Copenhagen