Proof of Trademark Use or was the Community Trademark Mis-sold

Proof this Brand is in Use ?

One of the significant selling points when the Community Trademark was introduced was that use in one country was enough to sustain the registration and therefore it was a great investment for those businesses who might want to exploit the common market in future.   Now that the CTM system is mature and has more business than it can cope with, there is a different attitude emerging and agents need to be more cautious about advising clients in a smaller local businesses to use the CTM system if they do not seriously intend to export within the next few years. Even if they do a national registration is now, in my opinion, an essential back stop. Some would also advocate refreshing registrations every five years rather than renewing, though it seems to me that ploy is somewhat unethical and abusive, though I can't (yet) find a way to challenge its users who include (otherwise) reputable brands that like to keep a defensive barrier around their core activities.

There are two situations where your client  may be asked for Proof of Use (PoU).

• The first is if your client is opposing a later mark and you can of course avoid that. The new guidelines on how that PoU will be examined were updated on 2 June 2014.
• The second is if some third party seeks to revoke the registration and then you cannot avoid it which is governed by these 2014 Guidelines though they do refer back to those above.

The law is of course not at the whim of the OHIM examiners and there are two significant ECJ cases that should guide them: Ansul (MINIMAX - C-40/01)  and  Leno (ONEL - C-149/11).  both were references from national courts about the concept of genuine use. Ansul condemned token use but was generous about the genuineness of use only on spare parts. It simply told us to look at the evidence or more elaborately:

When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of the goods or services at issue, the characteristics of the market and the scale and frequency of use of the mark.

Onel deflty evaded the difficult question of whether one member state is enough by suggesting that boundaries could be ignored but that means the use you are looking at is being judged relative to a huge market and that is where our smaller clients are bound to suffer.

50      Whilst there is admittedly some justification for thinking that a Community trade mark should – because it enjoys more extensive territorial protection than a national trade mark – be used in a larger area than the territory of a single Member State in order for the use to be regarded as ‘genuine use’, it cannot be ruled out that, in certain circumstances, the market for the goods or services for which a Community trade mark has been registered is in fact restricted to the territory of a single Member State. In such a case, use of the Community trade mark on that territory might satisfy the conditions both for genuine use of a Community trade mark and for genuine use of a national trade mark.

The things we need to be careful of when preparing PoU for OHIM are these:

• statements even sworn by the client will not be believed

'As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence.

• the standard of proof is criminal - not just on the balance of probabilities

‘… it is not sufficient for genuine use of the mark to appear probable or credible; actual proof of that use must be given. '

• invoices all addressed to one country may be a weak point, though it tends to depend on the outcome the Opposition Division is playing for so all Greek invoices for jeans may be fine but all German one for a game were not.
• the article numbers on invoices must be proved to connect to the product with the mark on it
• sample invoices are not enough but less than 110 page please
• small and genuine is not enough for OHIM but it is in the UK -see this IPkat analysis of a recent case for how many bottles of vodka creates a share of the market
• if there are alterations in colour between use and registration you will now need to show that this does not alter the distinctive character
• Can the client afford the disruption and cost of the evidence gathering exercise

If you are weak in one area then you may survive by having the evidence considered as a whole. Nevertheless this is a good moment to re-appraise whether a CTM is good for all clients