Trade Mark Owners: Get Your Documents in Order!

First we review a case which addresses proof of use. We then touch on two cases that highlight the need for attention when there is a transfer of the rights upon which an opposition is based.

In New Yorker SHK Jeans GmbH & Co KG v OHIM (intervenor Vallis K – Vallis A. & Co. OE; T-415/09; General Court; 29 September 2011), the applicant requested that the opponent prove use of the mark relied upon and the Court therefore had to consider whether the evidence filed by the opponent demonstrated genuine use. The court reconfirmed certain criteria that should be taken into account:

1. The evidence must address the place, time, extent and nature of the use;
2. The evidence should show use in accordance with the essential function of the trade mark, so that the trade mark signifies origin;
3. The use may not be only token;
4. An overall assessment should be undertaken, bearing in mind all relevant factors; it may be that genuine use is shown through various pieces of evidence considered together which, individually, would not demonstrate genuine use.

In relation to the last point, in this case, materials were submitted each of which would not ordinarily be considered to show genuine use but had value when assessed with the other materials filed, namely an Affidavit that did not include any detail as to the affiant, and photographs either undated or that showed the mark used on advertising material rather than the actual product.

Where invoices bore the relevant trade mark at the head of the invoices, this alone was not considered to show genuine use of that trade mark on the goods, although these invoices could be taken into account to supplement other materials as they still showed the nature of use. This is worth noting when considering using copy invoices to show use of a trade mark, although invoices are laid out in a variety of ways and their value is likely to vary.

For example, in the case La Mer Technology, Inc v OHIM (intervenor Laboratoires Goemar; Court of First Instance T-418/03; 27 September 2007), invoices did not show the relevant trade mark which was a house brand. However, products were clearly identified on the invoices and the associated packaging was provided which bore the house mark. It was therefore relevant to consider the packaging together with the invoices. Consequently, in some cases, it will be worth including certain pieces of evidence that may not appear to have significant value, but could be considered relevant when all the factors are assessed.

One last point reconfirmed by the court is that use does not necessarily have to be quantitatively significant; in this case, there was not a high volume of goods sold, but the invoices showed addresses of a number of different locations and this was considered to “represent an effective and genuine commercial effort”.

In the Fourth Board of Appeal decision (R2351/2010-4 of 14 February 2012) PT Comunicacoes, SA v Bouygues Telecom, SA, the Board reconfirmed how important it is to file the correct documents to show that the earlier mark is valid and that the opponent is indeed entitled to file the opposition. In this case, the opponent had not filed a copy of the most recent renewal certificate so that it was unclear as to whether the earlier registration was in force at the relevant date. Furthermore, the earlier registration had changed hands, but the only document submitted in this regard was a copy of the application to record the assignment; no copy of the actual transfer document was filed nor any proof the assignment recordal had taken place. The office is not required to tell the opponent what documents are missing; the onus is on the opponent to ensure the necessary evidence is filed to support its case within the set time period.

The CJEU also recently ruled on a case (OHIM v Nike International Ltd; Aurelio Munoz Molina C-53/11 of 19 January 2012) in which a transfer of an earlier right took place during the opposition proceedings but insufficient proof of the transfer was submitted so that the opponent was unable to show it had locus standi (essentially, the right to bring the action). In this particular case, the Court also helpfully confirmed that the Boards of Appeal do not have to follow the Community Trade Marks Office’s guidelines, but only the Council Regulation. The General Court had been wrong to suggest that, with reference to the guidelines, the opponent should have been given more time to show proof of ownership; this was not allowed under the Regulation.

Trade mark owners should endeavour to record assignments and changes of address promptly to ensure they are not caught out or delayed should they need to enforce their rights. Prompt attention to such administrative matters is usually more cost effective in the long run, particularly when a large number of marks are involved.

These cases serve to remind all parties involved in proceedings at the Community Trade Marks Office to take care in the preparation and filing of relevant documents so as to avoid featuring in a similar cautionary tale.

Useful links

T-415/09 New Yorker SHK Jeans GmbH & Co KG v OHIM
T-418/03 La Mer Technology, Inc v OHIM
C-53/11 OHIM v Nike International Ltd; Aurelio Munoz Molina