No error in EUIPO ‘Dolfina’ decision, says General Court
The EU General Court has backed a finding that the EU trademark ‘Dolfina’, opposed by Argentine polo team La Dolfina, was not put to genuine use in the market.
In 2004, an individual called Mauro Astengo applied to register ‘Dolfina’ in classes 3, 18 and 25.
The relevant goods and services include “bleaching preparations and other substances, all for laundry use” (class 3); “leather and imitations of leather (class 18); and “clothing, headgear, footwear” (class 25).
‘Dolfina’ was registered in 2007 but, three years later, the European Union Intellectual Property Office (EUIPO) was informed that the mark had been assigned to a company called Profit Good.
Two years after that, in 2012, the polo team La Dolfina sought to have the mark revoked, claiming it had not been put to genuine use within a continuous period of five years.
According to the General Court, which issued its decision yesterday, June 7, Profit Good failed to submit evidence of genuine use, so the EUIPO’s Cancellation Division upheld the revocation action in 2013.
However, in 2014, Sipral World, based in Barcelona, asked for the mark to be transferred to it and requested that the rights to challenge the revocation action be re-established. The company provided documents to establish genuine use.
After the mark was transferred to Sipral World, the Cancellation Division agreed to set aside its earlier decision and said it would consider the new evidence, as well as any further documentation.
Sipral World then provided evidence and also surrendered any use in relation to class 3, leaving classes 18 and 25 in dispute.
In 2015, the Cancellation Division upheld the revocation action in its entirety, apart from against T-shirts and caps in class 25.
La Dolfina then appealed against the Cancellation Division’s decision from 2014 to set aside its earlier ruling or, in the alternative, it appealed against the part of the 2015 decision on T-shirts and caps in class 25.
In 2016, the EUIPO’s Second Board of Appeal upheld the appeal of La Dolfina brought in the alternative (class 25), saying that the documents Sipral World had provided to support genuine use of T-shirts and caps were insufficient to meet that threshold. The relevant period was December 2007 to December 2012.
“More specifically, it considered that the evidence concerning the place and extent of use of that mark was insufficient,” the court said.
Sipral World asked the General Court to annul the contested decision.
The court first examined whether the contested decision included inadequate reasoning, as claimed by Sipral World, which also said the board had made “subjective and biased” considerations in rejecting genuine use and did not examine all evidence.
However, the arguments on subjectivity and bias were based on an incorrect reading of the decision, the General Court said, adding that Sipral World did not even specify which evidence was allegedly ignored.
Sipral World also contested the finding of no genuine use in relation to T-shirts and caps in class 25.
But the court agreed that the board correctly found that a sworn statement provided by Sipral World was not capable of showing use, and also rejected the argument that photographs used in conjunction with the statement could establish commercial activity.
The court also rejected the reliance on a licensing agreement signed by Profit Good (which transferred the mark to Sipral World) and related invoices, saying that because the deal concerned all goods covered by the mark, “it is impossible to determine whether T-shirts and caps were among the goods marketed under the licence agreement or what share of the sales they accounted for”.
Concluding that the board had made no error in its finding, the court dismissed the action and ordered Sipral World to pay costs.
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