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IP Cases & Commentary – Details

1 May 2012

Proof of Use and Genuine Use - General Court Stubs Out Imperial Tobacco Appeal in Player v Playa

Gemma Kirkland

First Board of Appeal decision 23 January 2012 (revised on 13 February 2012) in Case R18/2011-1 Imperial Tobacco Limited v Grand River Enterprises (Deutschland) GmbH

Grand River Enterprises (Grand River) applied to register the word mark PLAYA as a Community trade mark in November 2008. It covered goods in Class 34 that can largely be described as smoking articles and tobacco goods.

The application was opposed by Imperial Tobacco Limited (Imperial Tobacco) on the basis of various national registrations for PLAYER, PLAYER’S, JOHN PLAYER and PLAYER’S PLAYER’S NAVY CUT. These marks also covered various tobacco goods in Class 34.

Grand River requested that Imperial Tobacco prove genuine use of its national marks relied on in the opposition. Evidence was submitted and in October 2010, the Opposition Division dismissed the opposition on the grounds that the Austrian registration for PLAYER (which was the only mark considered by the Opposition Division) was not confusingly similar to PLAYA.

Appeal to the Board of Appeal

Imperial Tobacco appealed and the Board gave serious consideration to the proof of use filed by Imperial Tobacco during the course of the opposition proceedings. The Opposition Division had not examined the proof of use evidence because they had not considered there to be a likelihood of confusion between the marks. The Board, however, believed it necessary to first determine whether the earlier marks relied on by Imperial Tobacco that were closest to the PLAYA mark applied for, namely the PLAYER and PLAYER’S marks, had been put to genuine use in the Community during the relevant five year period.

Much of the evidence submitted was not considered sufficient to show the extent of use, which is one of the requirements for proving genuine use of a Community trade mark, but the interesting point arising from this decision is the analysis of the Board in assessing whether use of a mark in a form other than registered was acceptable under the provisions of Article 15 (1)(a) CTMR.

The Board concluded that the Austrian mark PLAYER (which as noted above had been the sole basis for the Opposition Division’s decision) had not been put to genuine use during the relevant period because the evidence submitted by Imperial Tobacco consisted of evidence showing the marks PLAYER’S NO. 6, JPS and JOHN PLAYER SPECIAL respectively. Crucially the Board held that the use shown by Imperial Tobacco depicted use of the PLAYER mark in a form which altered its distinctive character. Use of JOHN or NO. 6 in addition to PLAYER was in the Board’s view, sufficient to change the perception of the PLAYER mark in the minds of the consumer.

Further, the Board held that the wording of Article 15(1)(a) CTMR only provides for use in a form that is ‘slightly’ different from the registered mark. Where the use of the mark in trade differs from the registered mark only in ‘negligible elements’, the two signs can be considered ‘broadly equivalent’. The Board also concluded that only trade marks that have been slightly changed for marketing and promotional requirements can be considered as differing only in ‘negligible elements’ and ‘broadly equivalent’. The Board did not believe that the use of JOHN PLAYER for example was ‘broadly equivalent’ to the registered mark PLAYER. On this basis, use of the Austrian mark PLAYER was not found to have been proven.

Having found that the basis of the Opposition Division’s decision had not been put to genuine use, the Board systematically analysed each of the other PLAYER and PLAYER’S marks relied on by Imperial Tobacco to determine whether these had been genuinely used, such that they could still form the basis of the opposition. In each case, use was not found. All of the evidence found use of combined marks JOHN PLAYER or JPS for example, but the Board remained firm in their view that additions such as the word JOHN to PLAYER was enough to alter the distinctive character of the PLAYER mark registered. JOHN PLAYER and PLAYER were considered to be two different trade marks.

More interestingly, the Board went further to hold that in the United Kingdom, use of PLAYER’S was not sufficient to prove genuine use of PLAYER. Despite holding initially that PLAYER’S does show use of PLAYER, the Board stated at paragraph 40 of the decision that, “Even if there is a small difference, namely the presence of the final letter S, they constitute two different trade marks as is confirmed by the fact that the opponent (Imperial Tobacco) also registered trade mark No. 1300259 PLAYER’S (in the United Kingdom)”. The fact that Imperial Tobacco had registered PLAYER’S as a separate trade mark to PLAYER was pivotal in the Board’s finding.

The Board also referred to the ECJ decision in BAINBRIDGE, Case C-234/06, where the Court held “it is not possible to extend, by means of proof of use, the protection enjoyed by a registered mark to another registered mark, the use of which has not been established, on the ground that the latter is merely a slight variation of the former”. On this basis, the Board held that genuine use of PLAYER had not been proven in the United Kingdom.

In Ireland, Imperial Tobacco had only registered PLAYER and not PLAYER’S but had used PLAYER’s in the marketplace. In this circumstance, the Board believed that use of PLAYER’S could in fact count as a slight variation of PLAYER (though ultimately, the evidence of use was insufficient because it did not show the extent of use of the mark).

There were other marks relied on by Imperial Tobacco such as JOHN PLAYER and PLAYER’S PLAYER’S NAVY CUT but the Board held that although use of these marks had been proven, there was no likelihood of confusion arising between these and the PLAYA mark applied for.

As a consequence of the above findings, Imperial Tobacco’s appeal was dismissed in its entirety.

Comment

It will be interesting to see whether Imperial Tobacco appeals further to the General Court. Whilst it is reasonable to assume that use of PLAYER NO. 6 or even JOHN PLAYER may not be considered genuine use of PLAYER, the findings relating to PLAYER and PLAYER’S is surprising.

Most practitioners and brand owners alike would consider that the plural or possessive form of a mark counts as use of the singular and, judging from the Board’s finding in relation to Ireland, where the registered mark is singular but the use shows the possessive form, use of the registered mark may still be found.

In this case, however, the fact that Imperial Tobacco had registered both PLAYER and PLAYER’S as two separate marks was enough to persuade the Board that it was a different trade mark to PLAYER and thus use of PLAYER’S could not be found to support PLAYER. Brand owners may therefore wish to carefully consider whether they wish to register the plural or possessive form of a mark over the singular.

However, the best alternative remains to ensure that the mark is used as registered and registered as used in all its variations.

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