Use of TEFLON for third parties' final products does not ensure mark's essential function

In Polytetra GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-660/11, June 16 2015), the General Court has annulled a decision of the First Board of Appeal of OHIM in opposition proceedings involving the marks POLYTETRAFLON and TEFLON.

On July 24 2007 Polytetra GmbH filed a Community trademark application for the registration of the word mark POLYTETRAFLON for specific goods in Classes 1, 11, 17 and 40 of the Nice Classification. On May 23 2008 EI du Pont de Nemours and Company (DuPont) filed an opposition based on the earlier Community word mark TEFLON, also registered for specific goods in Classes 1, 11, 17 and 40.

The Opposition Division of OHIM rejected the opposition, ruling out any likelihood of confusion between the two marks. The First Board of Appeal of OHIM, however, annulled the decision of the Opposition Division. Polytetra subsequently appealed to the General Court. Polytetra claimed, among other things, that the Board of Appeal had erred in its assessment of the proof of genuine use of the earlier mark.

The General Court first considered, of its own motion, whether OHIM had failed to fulfil its duty to state reasons. According to the court, the board's assessment of DuPont's evidence supporting genuine use of the earlier mark lacked precision. Part of the board' decision was therefore annulled due to inadequacy of reasoning, and the General Court was able to review only Polytetra's second plea.

In its second plea, Polytetra claimed that the evidence provided by DuPont during the opposition proceedings was insufficient to prove genuine use of the earlier mark TEFLON, both for the final products and for "films, resins, finishes, homopolymers and copolymers". In relation to the final products incorporating DuPont's earlier mark, Polytetra submitted that the evidence proved at best the use of the earlier mark as a raw material or component for the final products of third parties, but not for the final products as such.

In this context, the General Court first examined whether a component and a final product containing that component belong to the same group of goods. The court found that the Board of Appeal was wrong to consider that use of the TEFLON mark in connection with third parties' final products containing Teflon could be construed as genuine use for the final products for which the mark was registered.

The General Court looked particularly at the fact that DuPont's non-stick materials and third-party products incorporating these materials are both, by their nature and intended purpose, essentially different and do not belong to the same group of goods.

The General Court then examined whether the earlier mark TEFLON had ensured the essential function of guaranteeing the origin of the goods for which it was registered. Contrary to the conclusion of the Board of Appeal, the court found that the earlier mark, used by third parties in connection with their final products, did not guarantee the origin of those goods. Instead, the mark was placed on the final products only in order to indicate the presence of the Teflon component. The goods themselves were identifiable and sold under the manufacturer's own mark.

Lastly, the General Court rejected Polytetra's claim regarding the lack of evidence of genuine use of the earlier mark for "films, resins, finishes, homopolymers and copolymers". The Board of Appeal had not erred in taking into account all the evidence, including evidence not bearing a date, and thereby carrying out an overall assessment of the evidence of genuine use of the earlier mark for DuPont's goods.

The General Court thus annulled the decision of the First Board of Appel of OHIM in its entirety and ordered OHIM to pay the costs.

Ania Pacyk Nielsen, Plesner, Copenhagen