Revocation proceedings do not constitute proper reason for non-use

European Union

In Naazneen Investments Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-250/13, March 18 2015), the General Court has upheld a decision of the Second Board of Appeal of OHIM confirming that the mark SMART WATER should be revoked for non-use.

On June 29 1999 Water Concepts Inc obtained the registration of the word mark SMART WATER for goods in Class 32 of the Nice Classification for "beverages, namely water with dietary supplements". The word mark was subsequently assigned to Naazneen Investments Ltd (the applicant) in 2007.

On July 3 2009 Energy Brands Inc filed an application for the revocation of the SMART WATER mark. Energy Brands argued that the word mark had not been put to genuine use within a five-year period. The Cancellation Division, as well as the Second Board of Appeal of OHIM, found that the mark should be revoked. The applicant then appealed the decision of the Board of Appeal to the General Court.

The applicant claimed, among other things, that the Board of Appeal had erred in its assessment of the applicant's evidence of genuine use and, therefore, that the board was wrong to find that the applicant had not proven the genuine use of the mark. As an alternative argument, the applicant claimed that the board was wrong to find that there were no proper reasons for non-use.

Initially, the General Court noted that all the relevant facts and circumstances must be taken into consideration when assessing genuine use. Further, the court noted that, in relation to the extent of the use, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period of use and the frequency of use. The court also noted that the assessment of a particular case implies a degree of interdependence between the relevant factors, which must also be taken into account. 

The General Court then looked at the various arguments raised by the applicant in support of its claim that the Board of Appeal had not made a correct assessment of the evidence produced in order to show genuine use of the mark. However, the court did not follow the applicant's arguments, but instead agreed with the assessment conducted by the Board of Appeal. By way of example, the General Court found that the evidential value of some of the documents provided was questionable, and that extracts from a website which had the message "site under construction, please visit us again later" did not show actual commercial activity.

The General Court then considered the alternative claim raised by the applicant (ie, that the Board of Appeal was wrong to find that there were no proper reasons to justify the non-use of the mark). One of the applicant's arguments was that it had justifiable reasons not to use the mark because a third party had brought revocation proceedings against the mark in 2008. In this connection, the General Court stated that the proprietor of a mark should conduct an adequate assessment of its chances of prevailing in revocations proceedings and draw the appropriate conclusions from that assessment as to whether to continue to use its mark. On that basis, the court agreed with the Board of Appeal that the revocation proceedings did not constitute a proper reason for non-use of the mark.

The General Court thus dismissed the action in its entirety and ordered the applicant to pay the costs.

Mette-Marie Henrichsen, Plesner, Copenhagen

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