• ALICANTE ABSTRACTS

    Proof of Use: How to Make a Little Go a Long Way in OHIM Proceedings

    How much use is “genuine use” within the meaning of Article 43 (2) of Council Regulation (EC) No. 40/94? That article requires opponents, when called upon, to provide proof that the earlier marks on which opposition is based were used for the registered goods or services in the 5 years preceding publication of the opposed CTM, where those earlier rights had been registered for 5 years as of that date.

    Evidence of long-term, established and widespread use is clearly beyond reproach. Where the use is small in scale or for a short period of time, however, proving that it is genuine can be more challenging. This article considers the guidance offered by three recent Court of First Instance decisions.

     

    Small-Scale, Short-Term Use

    The difficulties in proving that small-scale, short-term use is genuine were considered recently in The Sunrider Corp. v. OHIM (Case T-203/02).

    In that case, the opponent had been called upon to prove genuine use of a Spanish trade mark registration for VITAFRUT in respect of non-alcoholic beverages and concentrates in Class 32. As evidence, the opponent filed copies of invoices showing deliveries of concentrated fruit juices or juice concentrates bearing the mark to a single customer for 11 months between May 1996 and May 1997. The volume of sales was low, amounting to 3,516 items with a total value of no more than E4,800. The opponent additionally filed examples of undated labels identifying the nature of the products.

    The Opposition Division accepted the evidence despite the applicant’s arguments that the opponent’s use was too small to count as genuine. The applicant appealed.

    On appeal, the CFI held that whether use was “genuine” must be considered in light of the ratio legis of Article 43 (2). The purpose of the provision was not to assess commercial success, nor to limit the right to oppose to large-scale commercial entities. Rather, it was to ensure that earlier, sufficiently older marks have been put to use, so that oppositions are restricted to conflicts between marks where there is a commercial justification for the conflict. This was supported by the ECJ’s judgment in Ansul (Case C-40/01), which held that use need not be quantitatively significant to be genuine, provided it was sufficient to create or maintain market share in the goods concerned.

    Although the commercial volume and length of use were relevant factors, the fact that the opponent had shown use only over an 11-month period, with sales only to one customer, did not mandate a conclusion that the use could not be genuine. The sales over that period were fairly regular, and did not take place so near to the opposed mark’s publication date as to raise suspicions. The fact that there was only one customer was irrelevant, particularly taking into account that the goods were intended for end-users and would have been sold on to them by the supermarket customer in question. Although the labels bore no date, they were nevertheless regarded as capable of supporting other evidence produced, such as the copy invoices.

    Although the scale of use shown was very small, and the evidence of it was more limited than would have been preferable, nevertheless the use was deemed capable of creating or maintaining market share in concentrated juices. Hence, the appeal failed.

    Although the CFI looked favourably on the opponent in Sunrider, there was a hint of steel which it displayed more openly in its decision, on the same day, in MFE Marienfelde GmbH v. OHIM (Case T-334/01). In that case, the opponent had filed evidence of just four and a half months of use with a low turnover, immediately preceding the date on which the opposed CTM had been published.

    In that case, the CFI held that “the smaller the commercial volume of the exploitation of the mark, the more necessary it is for the party opposing…to produce additional evidence to dispel possible doubts as to its genuineness.” In MFE Marienfelde, the CFI regarded the evidence as sufficient, taking the nature of the goods and the market into account. However, the circumstances there were exceptional, and the CFI’s remarks leave no doubt that those relying on small-scale use have a heavier burden to discharge.

     

    Comment

    These cases may suggest that the CFI looks kindly upon struggling opponents who do not have a great deal of evidence to prove their use. It does not. One need only look at other recent cases such as Vitakraft-Werke Wuhrmann & Sohn GmbH & Co KG v. OHIM (Case T-356/02) to glimpse the steel underneath the velvet glove. In that case, the opponent’s filing of mere catalogues was the subject of a scathing rebuke. Use, the CFI held, could not be proved by evidence whose value lay in encouraging mere presumptions that the goods had been sold. “It is not sufficient for genuine use to appear probable or credible,” the CFI intoned, “actual proof of that use must be given.”

    How, then, can an opponent who has made only small-scale and short-term use discharge the burden? The interdependence of the factors to be considered provides a clue. Low sales might be off-set, for example, by high intensity or regularity of sales. Turnover and quantity of sales, moreover, should be assessed in the context of the size of the undertaking as a whole, its production and marketing capabilities, degree of diversification and the nature of the goods themselves. In MFE Marienfelde, for example, a relevant factor was that the goods were only in fact used in very small quantities, so that a smaller volume of sales was still commercially significant.

    The nature and amount of evidence which should be submitted will depend on the nature of the goods, the earlier rights and the circumstances of both the opponent and the trade. However, the judicial brow is more likely to be raised where the use is particularly small or its duration short, and these factors are important considerations too, in deciding how much proof will prove genuineness.