Three EU court rulings from last week and why they matter

Last week, WIPR reported on three senior court rulings, including one involving Adidas’s well-known ‘three-stripe’ mark. Below we outline why they are important for lawyers.

Three, two, win

The significant reputation of Adidas’s signature ‘three-stripe’ trademark was instrumental in stamping out Belgian-based Shoe Branding Europe’s attempt to register its own ‘two-stripe’ marks last week.

On Thursday, March 1 the Ninth Chamber of the EU General Court rejected Shoe Branding’s appeal in a long-running trademark dispute between the companies.

According to Iona Silverman, senior associate at Baker McKenzie, the court’s decision was uncontroversial but “pays tribute to the huge reputation that Adidas has invested in creating in its stripes over time”.

The court confirmed that the European Union Intellectual Property Office (EUIPO) was correct to uphold Adidas’s opposition to the registration when it re-examined the case. It had originally rejected the opposition, and Adidas brought the matter to the EU General Court in May 2015.

In February 2016, the Court of Justice of the European Union (CJEU) affirmed the General Court’s finding that there was a likelihood of confusion between the applied for ‘two-stripe’ marks and Adidas’s famous ‘three-stripe’ mark and referred the matter back to the EUIPO for re-examination.

Shoe Branding subsequently appealed against the EUIPO’s refusal to register the ‘two-stripe’ marks, leading to another meeting of the parties at the EU General Court.

The Belgian company argued that its marks and Adidas’s mark had peacefully coexisted for a number of years, a contention the court disagreed with.

Silverman said the court confirmed that coexistence is not “peaceful” when the use of one of the marks has been challenged by the owner of the other, as per the principles set out in Aceites del Sur-Coosur v Koipe.

“This case is a win for brand owners as it reinforces the idea that even simple marks can be effective as long as they are distinctive,” explained Silverman.

Silverman suggests that brand owners seeking to dispute similar marks that are currently on the market “should not dismiss the importance of a (less expensive) decision from a trademark registry as a starting point” before pursuing infringement proceedings.

A remarkable decision

The CJEU’s dismissal of an appeal from online vehicle marketplace mobile.de last week was “remarkable” in one respect, explained Carola Onken, partner at Klaka.

“It seems remarkable to the extent that the CJEU decided to apply the same standard in invalidity proceedings as it does in opposition and revocation proceedings regarding excesses of the time limit for providing proof of use,” said Onken.

The EUIPO’s Board of Appeal had taken into account additional evidence submitted by Bulgaria-based Rezon, which was seeking invalidation of two of mobile.de’s marks, and found that Rezon had proved genuine use. The General Court dismissed mobile.de’s appeals.

Axel Nordemann, attorney at Boehmert & Boehmert, noted that one of the most challenging tasks for trademark owners is to substantiate genuine use in opposition and cancellation proceedings.

There can be “dramatic consequences” for the trademark owner if it fails to substantiate genuine use—the trademark may be cancelled even if it is used, just because the owner failed to produce sufficient evidence.

“The CJEU has now confirmed what had been decided before: if the trademark owner in the first instance before the Cancellation Division doesn’t produce any evidence of use at all, then this failure may not be cured in the second instance before the Boards of Appeal,” said Nordemann.

According to the CJEU, this doesn’t apply where some evidence intended to show use has been produced within the time limit (as happened in this case).

Onken added that in light of OHIM v Kaul and Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, the EUIPO’s Board of Appeal may take into account evidence of use submitted before it for the first time.

This is provided that at least some evidence intended to show use has been presented within the time limit set and that the evidence filed before the appeal is not “entirely irrelevant” for the purpose of establishing genuine use.

Nordemann said that this approach is reasonable, explaining that it would be “over-formalistic” to not allow the trademark owner to supplement evidence before the appeal board.

Nordemann added: “The danger, however, remains, as supplementary evidence may be allowed only for those goods or services where evidence initially had been filed.”

‘Do your homework’

A German individual who took on the EUIPO in a design case should have done his “homework” in the EUIPO proceeding, and not at court level.

That was the advice given by Benjamin Koch, a partner at Lubberger Lehment.

German individual Claus Gramberg contested a Community design for a mobile phone and computer case based on a lack of novelty, claiming that the design had been disclosed before the June 30, 2011 priority date.

Gramberg said he had purchased phone cases corresponding with the contested design online, and presented evidence in the form of screenshots of the ‘amazon.de’ website to support his application.

The Cancellation Division ruled that the evidence was valid proof of lack of novelty and declared the design invalid. However, the EUIPO’s Third Board of Appeal found the evidence insufficient, so Gramberg appealed to the EU General Court.

Gramberg also produced new evidence before the General Court, but the court refused to take it into account and rejected it as inadmissible.

Koch said that Gramberg should have presented the facts and evidence to the EUIPO in his original invalidity filing, instead of during his appeal.

Although the General Court said it did not have the power to rule on whether the design is invalid, it said that the appeal board had incorrectly assessed the evidence before it, which could influence the outcome of the dispute.

“Using printouts from Amazon with the particular product’s Amazon standard identification number and the date the product has been offered for the first time is not an unsurprising approach when it comes to the question of when a product has been first on the market,” said Koch.

He explained that in adversarial proceedings, the other party will know whether the screenshots presented are correct (and represent the true facts) or not, and can respond accordingly.

“Even though the question as to whether or not the evidence in this particular case was sufficient or not is very much dependent on the particular circumstances; to me the presented evidence sounds convincing,” noted Koch.

He added: “Present all facts and evidence and do your homework in the EUIPO proceeding, and not at court level.”

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