Genuine use cannot be proven by means of probabilities or suppositions

European Union
In Centrotherm Clean Solutions GmbH & Co KG v Office of Harmonisation in the Internal Market (OHIM) (Case T-427/09, September 15 2011) and Centrotherm Systemtechnik GmbH v OHIM (Case T-434/09, September 15 2011), the General Court had confirmed the revocation of the Community trademark (CTM) CENTROTHERM on the grounds of lack of genuine use.
 
In 1999 the applicant, Centrotherm Systemtechnik GmbH filed an application for the registration of CENTROTHERM as a CTM for goods and services in Classes 11, 17, 19 and 42 of the Nice Classification. In January 2001 the mark was registered for all goods and services.
 
In 2007 Centrotherm Clean Solutions GmbH & Co KG filed an application for the revocation of the CTM for all of the registered goods and services. The application was notified to the applicant, which was invited to submit comments and proof of genuine use within a period of three months.
 
Within the set time limit, the applicant provided OHIM with 14 digital photographs, three invoices dated June 2006, one invoice dated January 2007 and a declaration (headed 'eidesstattliche Versicherung' or 'affidavit') by its manager. The applicant further stated that it was in the possession of many other copies of invoices which it would not be submitting at the outset for reasons of confidentiality. The applicant asked OHIM to adopt procedural measures in the event that it wished that other evidence and individual documents be added to the file.
 
On October 30 2007 the Cancellation Division of OHIM revoked the CTM for all goods and services at issue. The Board of Appeal upheld the decision in part, but annulled it in respect of some of the goods. The Board of Appeal found that evidence of genuine use had been adduced, since:
  • the photographs submitted by the applicant demonstrated the nature of the mark's use; and
  • the invoices produced showed that the goods had been marketed under the mark at issue.
Both the applicant and Centrotherm Clean Solutions appealed to the General Court. In support of its action, Centrotherm Clean Solutions raised a single plea in law, alleging an incorrect assessment of the evidence. The applicant raised three pleas for annulment and one plea of illegality. The pleas alleged:
  • an incorrect appraisal of the evidence of genuine use;
  • infringement of the duty to examine relevant facts of its own motion under Article 76 of the Community Trademark Regulation (207/2009); and
  • failure to take account of the evidence produced before the Board of Appeal.
The plea of illegality was raised in alternative against Rule 40(5) of the Community Trademark Implementation Regulation (2868/95).
 
The General Court dismissed the applicant's action and upheld Centrotherm Clean Solutions' action, confirming the revocation of the CTM in its entirety.
 
The General Court stated that genuine use of a trademark cannot be proven by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the mark on the market concerned. In order to assess the probative value of statements in writing, sworn or affirmed, it would be necessary to check the probability and the veracity of the account they contain, by taking account of, among other things:
  • the person from whom the document originates;
  • the circumstances in which it came into being;
  • the person to whom it was addressed; and
  • whether, on its face, the document appears sound and reliable.
As there were clear links between the author of the affidavit and the applicant in the present case, the General Court came to the conclusion that a probative value could not be attributed to that statement, unless it was supported by the 14 photographs and the four invoices provided by the applicant. The applicant had provided only three invoices dated July 2006 relating to sales to Denmark, Hungary and Slovakia, and one invoice dated January 2007 relating to a sale in Germany. All the invoices represented less than 0,03% of the turnover which the applicant declared to have achieved in 2006 with sales of the goods under the mark in question.
 
The applicant also conceded that the photos had not been taken during the relevant period. Additionally, none of the article numbers which were identifiable on the stickers of the photographed goods corresponded to the article numbers on the invoices.
 
The General Court concluded that neither the photographs nor the invoices corroborated the statement of the applicant's manager insofar as he maintained that the goods had been marketed under the mark. Accordingly, the court held that an overall assessment of the evidence in the file did not allow the conclusion, without resorting to probabilities or presumptions, that the mark was the subject of genuine use during the relevant period.
 
The General Court also dismissed the applicant's second plea. The General Court clarified that, according to the wording of Article 76 of the Community Trademark Regulation, OHIM's duty to examine relevant facts of its own motion does not take place in proceedings relating to relative grounds and that, in these proceedings, OHIM is restricted in this examination to the facts, evidence and arguments provided by the parties.
 
The General Court also dismissed the applicant's third plea, clarifying that the possibility for parties in proceedings to submit facts and evidence after the expiry of the periods specified for that purpose does not exist unconditionally, but was subject to the condition that there was no provision to the contrary. In the present case, Rule 40(5) of Regulation 2868/95 precluded the taking into account of the material submitted to the Board of Appeal.
 
Finally, the court dismissed the applicant's fourth plea, which alleged that Rule 40(5) of Regulation 2868/95 was illegal to the extent that it prevented OHIM from taking account of evidence submitted out of time in revocation proceedings. The General Court noted that unexcused non-compliance with time limits, which are of fundamental importance to the proper functioning of the Community system, may be penalised in Community legislation by forfeiture of a right, without it beeing inconsistent with the principle of proportionality. Rule 40(5) would in no way affect the rights of a CTM proprietor unless the latter chooses, as did the applicant, not to provide the material in its possession showing genuine use of the mark within the set time limit.
 
Philipp Henrichs, Maiwald Patentanwalts GmbH, Munich

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