Useful guidance provided with regard to evidence of use of a mark

European Union
In Atlas Transport GmbH v Office for Harmonization in the Internal Market (OHIM) (Case T-482/08, June 10 2010), the General Court has overturned a decision of Fourth Board of Appeal of OHIM in relation to an application for the revocation of a Community trademark (CTM) on the grounds of non-use.

In May 1997 Atlas Transport GmbH applied for the registration of the word mark ATLAS TRANSPORT as a CTM for transportation services in Class 39 of the Nice Classification. The application was registered in December 1998. 

In August 2006 a German individual, Alfred Hartmann, applied for the revocation of the mark on the grounds that it had not been put to genuine use for a continuous period of five years. In September 2007 the Cancellation Division of OHIM rejected the application, finding that Atlas had made genuine use of the mark during the relevant period (ie, August 8 2001 to August 7 2006). 

In November 2007 Hartmann appealed against the rejection. In September 2008 the Fourth Board of Appeal upheld the appeal, finding that the evidence submitted by Atlas did not show that the mark had been put to genuine use during the relevant period. Atlas appealed to the General Court, arguing as follows:
  • The board had breached Article 15(2)(a) of the Community Trademark Regulation (40/94), because it had not examined whether the forms in which the mark had been used altered the distinctive character of the mark. Atlas’ headed paper contained the additional elements 'The Duesseldorfer' and 'atc', which Atlas claimed did not alter the distinctive character of the mark. 
  • The public would perceive the three elements separately because of their different colours. To the extent that the public would consider the other elements to be distinctive, it would consider them to be supplementary to, and independent from, the ATLAS TRANSPORT mark. Therefore, the board had erred in finding that the public would perceive the totality as a single mark. Moreover, 'The Duesseldorfer' was purely descriptive and devoid of distinctive character and, therefore, was unable to alter the distinctive character of the ATLAS TRANSPORT mark. Further, because the letters 'atc' were an abbreviation of the English version of the company name ('Atlas Transport Company'), they would reinforce the distinctive character of the ATLAS TRANSPORT mark.
  • The board had breached Article 15(2)(a) by failing to examine whether the use of 'gesellschaft mbh' or 'gmbh' on some of the evidence altered the distinctive character of the mark. The board must have implicitly considered that the addition of the company name elements affected the distinctive character of the mark, which would be contrary to jurisprudence.
  • The use of the company name on invoices in relation to services would be akin to printing it on a product and, therefore, would constitute use of the mark. This was why the public would always perceive the reference to a company name on an invoice as an indication of the services provided by the company. This was all the more true when, as in the present case, the company used only one trademark.
  • The use of 'a.t.l.a.s' on some items of correspondence and advertising material did not affect the distinctive character of the mark, contrary to the position implicitly taken by the board, which was itself contrary to jurisprudence (according to which the absence of an element or the modification of punctuation could not undermine the distinctiveness of the mark).
OHIM, with Hartmann's support, stated that the board had properly examined the evidence. According to OHIM, the public would perceive the headed paper as a unit comprising the various verbal elements, of which the dominant element was the word 'Duesseldorfer'. In this respect, it argued that the board should reject Atlas’ argument that the element 'The Duesseldorfer' lacked distinctive character because, in OHIM’s opinion, a non-distinctive element could affect the overall impression produced on the relevant public or even define it, depending on its graphical representation.

In relation to the elements 'gmbh' and 'gesellschaft mbh', OHIM accepted that they were non-distinctive, but considered that, in conjunction with the other elements of the headed paper, they separated the element 'atlas' from the element 'transport'. Moreover, the element 'transportgesellschaft' could be interpreted as meaning that Atlas was a transport company. OHIM argued that Atlas was aware of this problem because it had stopped using its legal name on invoices from 2000, also removing its address and telephone number. Moreover, if 'gmbh' and 'gesellschaft mbh' were the only elements to be added to the registered mark, it was reasonable to consider that Atlas had made genuine use of the mark, which was why the board had accepted two invoices from August 2003 as evidence of use of the mark. OHIM’s view of the use of 'a.t.l.a.s.' was that the use of one element of the registered mark, particularly in a modified form, should not be recognized as proper use of that mark, in part because the full stops separating the letters modified it and would lead the public to pronounce the letters separately.

The General Court first considered whether the 39 copy invoices that Atlas had submitted as evidence of use of the mark contained additional elements in relation to the registered mark which altered the distinctive character of that mark, such that it could not constitute use of the mark. It then considered the invoices in detail.

Only 19 of these invoices were from the relevant five-year period, ignoring duplicates. Fifteen of those 19 had a header containing the element 'The Duesseldorfer', in which the letter 'O' encircled the element 'atc'. The words 'atlas transport' appeared below the element 'The Duesseldorfer', and none of the invoices included the element 'gesellschaft mbh'. Of the four invoices which did not contain the element 'the Duesseldorfer', two had no header and two stated only 'atlas transport - gesellschaft'.

On the invoices bearing the element 'The Duesseldorfer', the element 'atc' was in the same colour as 'atlas transport', which, according to the court, could establish a link between the two lines of the header. However, the positions of the elements and their differences in colour, height and font meant that they would not be seen as a single element, but as separate elements in juxtaposition. The fact that the registered mark was used with and without additional elements could lead to the conclusion that the distinctive character of the mark was not affected (see CRISTALL CASTELLBLANCH (Case T-29/04) and LA MER (T-418/03)).

The court further stated that the elements added to the registered mark occupied a secondary position in the overall impression created by the mark when used in the header, and that these elements, for the most part, possessed a low level of distinctiveness. In relation to the element 'The Duesseldorfer', the location of Atlas’s registered office in Dusseldorf meant that it had a low degree of distinctiveness for the services because it would be perceived as an indication of the geographical origin of the services.

Continuing its analysis, the court held that the secondary position of the element 'atc' in the header, its relative shortness compared to the other elements and the addition of this abbreviation of 'Atlas Transport Company' to that element had the same conceptual scope as the ATLAS TRANSPORT mark and, therefore, could not affect that distinctiveness of the mark as registered. The latter thus retained its function as a badge of origin of the services, even in conjunction with the abbreviation 'atc'.

Finally, the court agreed with OHIM as to the lack of distinctive character of the element 'gesellschaft', which was clearly distinct from the element 'transport' and, therefore, was incapable of affecting the distinctive character of the registered mark. As the additional elements were dissociable from the 'atlas transport' element, occupied a secondary position in the overall impression of the mark and possessed a low level of distinctiveness, the distinctive character of the registered mark was not affected. The decision of the board was thus overturned.

This judgment confirms that a relatively small amount of evidence of use will be sufficient to validate a CTM registration attacked on the ground of non-use. It also provides a useful precedent in the court’s highly detailed analysis of the evidence and its conclusion that the evidence showed use of the mark, despite the presence of several additional elements in at least some of the invoices.

Chris McLeod, Hammonds LLP, London

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