Proof of use requirements in cancellation actions highlighted

European Union
In Cohausz v Office for Harmonization in the Internal Market (OHIM) (Case T-409/07, September 23 2009), the Court of First Instance (CFI) has upheld a decision of the First Board of Appeal of OHIM in which the latter had found that the applicant for the cancellation of the trademark ACOPAT had failed to prove that his COPAT marks had been put to genuine use. 

On May 8 2000 José Izquierdo Faces filed an application for the registration of ACOPAT as a Community trademark (CTM). The application was published for opposition purposes on January 29 2001. 

On April 27 2001 Helge B Cohausz filed a notice of opposition against the application based on earlier German registrations for the trademark COPAT. The opposition was dismissed by the Opposition Division of OHIM on the grounds that the evidence of registration of the earlier marks had not been translated into the language of the case.
 
On April 6 2004 Cohausz applied for a declaration of invalidity of the ACOPAT mark, arguing that it was confusingly similar to its earlier COPAT marks (registered in 1989 and 1993). Faces requested that in accordance with Articles 56(2) and (3) of the Community Trademark Regulation (40/94) (now Articles 57(2) and (3) of Regulation 207/2009), Cohausz provide proof that the earlier marks had been put to genuine use.

On December 15 2004 Cohausz submitted documents to prove that the earlier marks had been put to genuine use in Germany during the five-year period preceding the application for a declaration of invalidity (ie, from April 6 1999 to April 5 2004), as well as during the five-year period preceding the publication of the CTM application (ie, from January 29 1996 to January 28 2001).

The Cancellation Division of OHIM held that “although the invoices, brochures and other evidence relating to the period from January 29 1996 to January 28 2001 had been ‘highly reduced’, the documents taken as a whole allowed the conclusion to be drawn that the mark [...] had been put to genuine use” in relation to the relevant services. In view of the similarity of the marks, the Cancellation Division declared that the ACOPAT mark was invalid.

Faces appealed. The First Board of Appeal of OHIM reversed and set aside the decision of the Cancellation Division, holding that Cohausz had failed to show the extent of use of his marks between January 29 1996 and January 28 2001. Cohausz appealed to the CFI.

Before the CFI, it was common ground that proof of use had been established in respect of the five-year period preceding the application for a declaration of invalidity. The issue was thus whether Cohausz had demonstrated that his marks had been put to genuine use during the five-year period preceding the publication of the CTM application. Cohausz attempted to file new evidence of use for this period. However, the CFI, citing Article 63 of Regulation 40/94 (now Article 65 of Regulation 207/2009), declined to consider this evidence as it had been submitted for the first time before it. Instead, the CFI focused its review of the legality of the Board of Appeal's decision based on the material produced before the board. After an extensive evaluation of the evidence, the CFI held that the latter had not erred in finding that Cohausz's marks had not been put to genuine use in Germany during the relevant period. The action was thus dismissed.

The decision shows that trademark owners should keep all documentation concerning use of their marks in the European Union - and not just for the past five years. In this case, proof of use during the period from 1996 to 2001 could have saved Cohausz's cancellation action. 
 
Peter Gustav Olson, MAQS Law Firm, Copenhagen

Unlock unlimited access to all WTR content