European case law – nature and evidence of use

EUIPO_LOGO_ENThe case: EUTM proprietor registered the figurative mark TESTA ROSSA for goods and services in Classes 7, 11, 20, 21, 25, 28, 30, 34 and 38. An application for partial revocation pursuant to Article 51(1)(a) CTMR was filed in respect of all the goods and services except for coffee, tea, cocoa, sugar, chocolate, chocolate-based beverages and sweets in Class 30. The Cancellation Division (CD) revoked the mark with respect to all the goods and services covered by the application for revocation.

The EUTM proprietor appealed. The Board of Appeal (BoA) partially annulled the CD’s decision. The reason was that it maintained the registration of the mark in respect of household, kitchen containers; glassware, porcelain, in particular tableware; glass beverage ware in Class 21 and clothing, namely aprons, shirts, polo shirts and tee-shirts; headgear in Class 25 (the contested goods in Classes 21 and 25). The BoA considered the evidence of use submitted late by the EUTM proprietor to be admissible, and stated that it could not be ruled out that the use was genuine solely because the commercial acts invoked were not directed at end consumers but at industrial customers. The BoA found the evidence insufficient for the remainder of the goods and services covered by the mark.

The EUTM proprietor and the revocation applicant respectively filed actions for annulment before the General Court (GC). The GC joined the cases and dismissed both actions.

evidence of use

Substance: Outward use does not necessarily mean use aimed at end consumers. The relevant public does not comprise of only the end consumer, but also of specialists, industrial customers and other professional users. Genuine use of the mark relates to the market in which its proprietor pursues its commercial activities (paras 38, 39). It is common in a market such as that of the EU to direct commercial acts at professionals in the sector concerned, and particularly at resellers, in order to create or preserve an outlet for goods such as those at issue (para. 40).

Even though the contested goods in Classes 21 and 25 might be offered with the ultimate goal of encouraging the relevant public to purchase the coffee sold by the EUTM proprietor, they are not handed out as a reward for the purchase of other goods (the coffee) or to encourage the sale of those goods. The contested goods in Classes 21 and 25 are accounted for and offered separately. They are independent goods which have their own outlet (para. 48). The contested goods in Classes 21 and 25 are also in competition with other similar goods from other undertakings on the market. They are also likely to provide these goods in order to promote their main product (para. 49). As regards the remaining goods, the EUTM proprietor did not provide sufficient evidence of genuine use (paras 56-58).

The mere provision of a direct line for customers does not constitute an independent service but only a service of assistance connected with the sale of the goods actually marketed by the proprietor of the mark (para. 58). When assessing genuine use of a mark, small and large undertakings cannot be treated differently depending on their size, since the genuine nature of that use is assessed based on the same objective criteria (paras 68-69).

Source: Alicante news