patpol-1
FERNANDO CORTES / SHUTTERSTOCK.COM
1 May 2015TrademarksIzabella Dudek-Urbanowicz

Community trademarks: A double-edged sword

If the owner of an earlier Community trademark (CTM) decides to initiate an opposition or invalidation proceeding against another party’s trademark before the Office for Harmonization in the Internal Market (OHIM), the trademark owner must expect to prove that it has genuinely used the earlier mark, as the rival party will have the right to request this under the relevant legislation.

As far as the opposition procedure is concerned, article 42(2) of the Council Regulation No. 207/2009 of February 26, 2009 on the CTM states that “if the applicant so requests, the proprietor of an earlier CTM who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the CTM application, the earlier CTM has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier CTM has at that date been registered for not less than five years”.

Moreover, according to article 42(3) of the regulation, the request for furnishing proof of use may not only be filed by the defendant in the opposition proceedings based on an earlier CTM but also in proceedings based on an earlier national mark valid in an EU member state.

If this is the case, the defendant may request that the proprietor of an earlier national mark offers proof of genuine use in the member state during the five years preceding the publication date of the CTM application in connection with the goods and services for which the national mark is registered, unless it can be proved that there are justifiable reasons for non-use of the mark.

Analogous provisions are binding in the trademark invalidation procedures, which require the opposing party to show that its earlier mark has been put to genuine use for five years before the date of the application for a declaration of invalidity, or—regardless of that period—the newer mark was filed in bad faith.

According to articles 57(2) and (3) of the regulation, where the earlier mark has been registered for five years or more when the application for a declaration of the new application’s invalidity is filed, the proprietor of the new application may request that the earlier right owner submit proof that its mark has been put to genuine use in the EU in connection with the goods or services it is registered to protect, or that proper reasons for non-use exist.

"Genuine use shall also count as use of the mark in a form that may slightly differ with regard to some elements of the form directly covered by the registration."

If the party summoned to submit proof of use fails to do so, or if the proof is found to be insufficient, the opposition or the request for declaring invalidity will be rejected. If the party filing the request for invalidation provides proof of use concerning only some goods or services under the mark in question, for the purposes of examination of the opposition or the request for invalidation the mark shall be deemed to be registered in respect of only those goods or services.

Moreover, the party that initiates the opposition or invalidation procedure must also take into account that its failure to file proof of genuine use of the earlier mark may result not only in losing the initiated proceedings, but also provoking the opposite party to start the proceedings for declaring a lapse due to non-use of the earlier mark.

According to article 51(a) of the regulation if, within a continuous period of five years, the earlier CTM has not been put to genuine use in the Community in connection with the goods or services it is registered for, and there are no proper reasons for non-use, this shall be regarded as justified grounds for revocation or declaring that the CTM has lapsed. Similar legal measures are provided under local legislation of the member states.

If the owner of an earlier mark complies with the request for showing proof of use, the essential examination of the proof filed by the owner will be made in the same way in opposition and invalidation proceedings.

Evidence of use

According to rule 22(3) of European Commission Regulation No. 2868/95 of December 13, 1995 implementing Council regulation No 40/94 on the CTM, the indications and evidence for showing proof of use shall consist of indications concerning the place, time, extent and nature of use of the opposing party’s trademark for the goods and services it is registered for (and on which the opposition is based).

Documents supporting the evidence of use should include packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and statements in writing, sworn or affirmed or having a similar effect under the law of the state in which the statement is made.

In addition to the above, genuine use shall also count as use of the mark in a form that may slightly differ with regard to some elements of the form directly covered by the registration. However, these elements cannot alter the distinctive character of the mark as originally registered.

Generally, the material requested as proof of use of the earlier mark does not differ in opposition or invalidation procedures. However, the difference lies in the relevant time of use.

In opposition proceedings, a party that is requested to show proof of genuine use of the mark on which an opposition is based must simply prove that it has used the mark during the period of five years preceding the date
of the opposed CTM application’s publication.

On the other hand, in invalidation proceedings there are two relevant periods during which the use has to be established:

•  Before the application for invalidity: The party must offer proof that the earlier mark has been put to genuine use during the period of five years preceding the date of the application for a declaration of invalidity, provided the earlier CTM has at that date been registered for more than five years; and

•  Before the publication date of the contested application: If on the date on which the contested CTM application was published the earlier mark was registered for at least five years, the requested party additionally has to show proof of use of the CTM during the five years preceding the date of publication of the application.

In some instances these two relevant periods overlap fully or partially, while in other cases they are not connected at all, and are simply running, with or without interruptions, parallel to each other.

Regardless of whether the party intends to initiate the opposition or invalidation proceedings before OHIM, it is essential to take into account a possibility of being requested to furnish proof of use. Therefore, it is essential for the opponent beforehand to make a good assessment of its ability to provide proof of genuine use of the mark on which the proceedings are based.

The opponent must be aware that its potential failure to provide proof of genuine use may not only result in losing the proceedings before OHIM but may also put its trademark in danger of being declared lapsed due to non-use. Before taking any action, it is also important to be concerned about the costs of filing the opposition or the request for invalidation at OHIM, especially if it involves some risk of being rejected.

To sum up, one might say that opposition or invalidation proceedings before OHIM may turn out to be a ‘double-edged sword’ for the opponent, in particular if it is not certain of its own ability to provide proof of genuine use. 

Izabella Dudek-Urbanowicz is head of trademarks and designs at  Patpol. Her key areas of practice include trademarks, industrial designs, and domain names. She represents Polish and international clients in litigation matters before the Polish Patent Office, Polish courts and OHIM. She can be contacted at: izabella.urbanowicz@patpol.com.pl

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