Lone Invoice Tips Balance for CTM Proof of Use

In proof of use matters, OHIM’s preference for documentary evidence and, in particular, invoices, is well-known. Without multiple invoices proving sales in the relevant territories, an opponent required to prove use must reckon with an institutionalised scepticism as to whether the mark has been used in an outward-facing manner. Mere catalogues and brochures on their own are not as persuasive.

Nonetheless, in a recent decision the Court of First Instance held that a single invoice proving a small number of sales in Finland was enough, in the context of the other evidence filed and the nature of the goods, to support a finding of genuine use there (Boston Scientific Ltd. v OHIM, T-325/06). The decision highlights how different forms of evidence that would not be sufficient on their own can support and strengthen each other to sustain a claim to genuine use.

A Medical Matter

The issue arose in the context of an opposition by Terumo Kabushiki Kaisha to Boston Scientific’s CTM for CAPIO, covering suturing materials and apparatus in Class 10. Opposition was based on inter alia a Finnish registration for CAPIOX for surgical and medical goods in Class 10.
Boston Scientific called on Terumo to prove genuine use of CAPIOX in Finland, and both OHIM and its Board of Appeal found that use had been proved, but only in respect of “hollow fiber oxygenators with detachable hard-shell reservoir,” which mechanically oxygenate blood during open-heart surgery.

Proof of Use

On appeal before the CFI, Boston Scientific argued that Terumo had not proved genuine use of CAPIOX in Finland for any goods.

In particular, it noted that Terumo had supplied only a single invoice addressed to a customer in Finland, and that invoice had related to the sale of only 12 items for a total of €2,208, referring to products under the names Capiox SX Open System and Capiox SX Holder. It was not apparent from the face of the invoice what these products were, and Boston Scientific argued that a single sale of a mere 12 items for a total of €2,208 could not be regarded as genuine use sufficient to create or maintain market share.

Boston Scientific pointed out, moreover, that a separate sales list provided by Terumo gave an inconsistent sales figure for the same invoice in Finland. It further noted that the other materials filed by Terumo, comprising mainly promotional materials and labels, were entirely in English and could not be presumed to have been distributed in Finland. The labels moreover did not indicate the nature of the goods to which they were allegedly attached.

It further noted that no witness statement or affidavit had been filed by someone in a position of authority at Terumo to explain the derivation of the information presented in the list of sales.

Under the Knife

The CFI reviewed Terumo’s evidence with surgical precision, and displayed a noteworthy willingness to draw information and inferences from a variety of sources in order to reach a conclusion.

The Court held that although Terumo had filed only one invoice, that single document was enough, in the context of the other evidence filed, to establish genuine, outward-facing use of the CAPIOX mark in Finland for hollow fiber oxygenators.

The invoice referred to products including CAPIOX SX as part of their name, and even though the nature of the products was not apparent on the invoices, it was clear from the promotional materials that such goods were hollow fiber oxygenators. Even though some of the promotional materials post-dated the relevant period, there was nothing to suggest that the goods they described as being sold under the mark were not the same during the relevant period.

Such goods were clearly highly specialised and targeted at the professional medical community. Although the Court regretted the lack of evidence as to the nature of the market in those goods in Finland, it nonetheless considered that such a market would inevitably be small. In that context, the sale of just 12 items for a total of €2,208 was sufficient to create or maintain market share in that highly specialised field.

The Court noted the apparent inconsistency between the invoice total and the data given in the separate sales list provided by Terumo, but was satisfied by Terumo’s explanation that the different figures derived from the use of different currencies, and that there was in fact no inconsistency.

The mere fact that Terumo had not supplied a statement to explain the derivation of the data appearing in the sales list did not undermine its credibility taking into account the apparent precision of the data and the fact that it originated from Terumo.

Although the promotional materials and labels were all in English, the Court was satisfied that English was commonly spoken in the medical field internationally, including in Finland, where knowledge of English was, in the Court’s opinion, very widespread. Consequently, the mere fact that these materials were not in Finnish did not cast sufficient doubt on whether they had been distributed in Finland. The fact that English was a working language in the medical profession in Finland was further supported by the fact that the lone Finnish invoice relied on by Terumo was also in English.

The Court accepted that the single sale demonstrated by Terumo with its invoice did not prove use in a substantial part of Finland. Nonetheless, territorial scope of use was not the only factor it could consider. Taking the specialised nature of the goods into account, the Court was satisfied that the single sale of 12 items demonstrated genuine, not token, use of the mark in Finland.

The Court went on to uphold the Board of Appeal’s finding that the marks were similar and that there was a likelihood of confusion.

Comment

The importance of this decision is not so much in its outcome, but in the process adopted by the Court.
A dearth of invoices has long been seen as a serious flaw in proof of use, but this case shows that where at least one invoice is provided, other evidence can support the claim to use. In particular, the common failure of invoices to indicate the nature of the goods and whether the mark appeared on them can be remedied by promotional materials that show the product and the branding.
In addition, internal evidence supporting the alleged sale, such as internal sales records and tables derived from them, can further support a claim that a sale or sales took place, even though the internal data on its own would not suffice.

Evidence that goods are highly technical or specialised can further enhance the standing of a single invoice or a small number of sales in a small geographical region. In this case, Terumo was fortunate that the Court allowed the specialist nature of the market to speak for itself. For others, though, explaining why a small number of sales is sufficient to create or maintain market share in a relevant market can considerably boost thin evidence of actual sales.

Finally, it is clear that linguistic failings need not spell doom for proof of use where, as here, it can be concluded that the language of the invoices, labels and brochures would be used and understood in the relevant sector. Again, Terumo was fortunate that the Court needed no evidence on this point, but others would do well to address the point to shore up the evidence filed and avoid an adverse finding.

If Terumo had not filed its lone invoice, it is unlikely that its claim to proof of use would have prospered. That invoice was the only evidence filed that demonstrated an external sale of the goods in the relevant Member State. Without it, the promotional materials on their own, particularly as they were not in Finnish, might have been less likely to have been regarded as having been distributed in Finland, despite the Finnish medical profession’s assumed general knowledge of English. The decision in this case turned on the interdependence of all the evidence, including the single invoice, and its absence would likely have affected the outcome.

For those involved in CTM proof of use matters, Terumo’s experience is instructive. It shows the importance of shoring up thin evidence of actual sales with as much relevant ancillary material and supporting argument as possible, and of guiding OHIM to the interdependent supporting features of all the evidence.

Scant evidence of actual sales therefore need not cause despair; but parties relying on it are more likely to prosper if they recognise the scale of the task and tailor their further evidence and arguments accordingly.