Requirements for proving use of business name in opposition reaffirmed

European Union

In Grain Millers Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T-430/08, July 9 2010), the General Court has upheld a decision of the Second Board of Appeal of OHIM in which the latter had held that the evidence submitted by the opponent to demonstrate use of its business name was sufficient to satisfy the requirements set forth in Article 8(4) of the Community Trademark Regulation (207/2009).

On February 5 2004 US company Grain Millers Inc submitted an application for the registration of the word mark GRAIN MILLERS as a Community trademark (CTM) for goods in Classes 29, 30 and 31 of the Nice Classification. German company Grain Millers GmbH & Co KG filed an opposition against the registration of the mark for all the goods listed in the application based on its business name Grain Millers, as well as the figurative representation of its name on the company's letter heads. The product on which the opposition was based was flour (in particular, wheat flour and rye flour).

The Opposition Division of OHIM partially upheld the opposition with regard to “flour and preparations made from cereals, bread, pastry and confectionery” in Class 30, and “agriculture, horticultural and forestry products and grains” in Class 31. On appeal by the applicant, the Board of Appeal of OHIM annulled the decision of the Opposition Division inasmuch as it had rejected the application for preparations made from cereals, bread, pastry and confectionery in Class 30, and for forestry products in Class 31. The board based its decision mainly on the following arguments: 

  • The German trademark law protects “business designations” and, therefore, it was necessary to consider such rights within the scope of Article 8(4) of the regulation;
  • Concerning the evidence submitted by the opponent (in particular, a press release, a German newspaper article, exchanges of letters with business partners and an invoice), the board found that the opponent had sufficiently demonstrated that its unregistered sign had been the subject of genuine and sufficient use in the course of trade for wheat flour and rye flour prior to date of filing of the application, and that such use was of more than mere local significance, as required by Article 8(4); and
  • Certain of the applicant’s goods were identical, or similar, to the opponent's goods, thereby resulting in a likelihood of confusion with the protected business designation.    
Before the General Court, the applicant first argued that the “requisite standard of proof” to demonstrate use in the course of trade in the context of Article 8(4) is identical to that required in accordance with Article 42(2). Therefore, the opponent had to prove “genuine use” of its unregistered sign in the course of trade in Germany. Second, the applicant alleged that the board had overestimated the value of the evidence submitted by the opponent in order to demonstrate use of its business name.

The General Court dismissed the action on the following grounds:
  • The aims and conditions connected with proof of genuine use of a Community or national trademark according to Article 42(2) are different from those relating to proof of use, in the course of trade, of the sign referred to in Article 8(4). First, Article 8(4) does not require proof of genuine use of the sign relied on in support of an opposition. Moreover, unlike the provisions in respect of CTMs, EU law does not provide for any consequences in the event of absence of use without due cause of a business name during a certain period.
  • Article 8(4) does not require that the use in the course of trade of the sign on which the opposition is based be proved in the territory of the member state the law of which is invoked. Therefore, use of the sign in connection with a cross-border commercial transaction fulfilled the requirements set forth in Article 8(4). Moreover, use of the opponent's business name when importing wheat into Germany constituted use, irrespective of whether the business name had been used in the territory of Germany.
  • The documents provided by the opponent attested that the significance of the use of the business name was not merely local, since they concerned a commercial transaction between Germany and Romania.
  • The press release and the newspaper article provided by the opponent had probative value, as they demonstrate that the use had occurred in the context of a commercial activity with a view to economic advantage, and not as a private matter. Since the main purpose of a press release issued by an undertaking is to transmit information on that undertaking to its customers, it constitutes a means of advertising.
Florian Schwab, Boehmert & Boehmert, Munich 

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