by Gert Würtenberger
A Union trademark that has been registered for more than five years is subject to the user requirement in order to safeguard its enforceability in opposition and/or infringement proceedings (as regards proof of use in opposition proceedings, see Article 47(2) EUTMR). Whether genuine use has occurred is, according to established case law, to be established by a global assessment that takes into account all relevant factors of the particular case. That assessment entails a degree of interdependence between the factors to be taken into account, one of which is the commercial value achieved under the trademark. Thus, the turnover figures and sales volumes of the goods achieved under a trademark that has been registered for more than five years cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trademark and the characteristics of the goods or services on the relevant market.
In a most recent decision pertaining to a trademark used for garden roses, the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) had to decide whether the sales volume achieved under the opposition mark – which had been used in relation to garden roses – could be considered as sufficient to establish genuine use. Over the years the trademark owner had achieved annual turnovers ranging between slightly more than € 500 and more than € 4,000 per annum resulting from sales under the trademark in Germany and the Netherlands. During the relevant time period the average price per plant was € 4. The net sales figures were provided in a declaration in lieu of an oath, accompanied by samples of invoices, internet excerpts and catalogues dating from the relevant years, which included advertisements for a certain rose variety under the subject trademark.
While the Opposition Division regarded the proof of use as insufficient to confirm genuine use of the opposition mark, the Board of Appeal concluded that these sales volumes, although they had been relatively small, cannot be considered to be purely symbolic. In order for trademark use to be regarded as genuine account must be had whether an outlet has been preserved or created for the goods in question in relation to the duration and consistency of sales, the diversity of the addressees of the invoices and the specificity of the products, and whether such use is not so limited that it could be concluded that the use was merely token use, minimal or notional for the sole purpose of preserving the protection conferred by the mark.
What was particularly relevant for the Board of Appeal was the fact that the market for garden roses, in contrast to annual balcony plants or potted plants, is limited. The Board observed that there is only a very limited need for the addressed trade circles to replace the subject roses once they have been planted, given that garden roses are persistent plants that, with appropriate nurturing, often survive for decades. Due to the specific nature of garden roses they cannot be regarded as everyday consumer goods, but must be considered as specific products for a limited market. Taking into account the rather small number of customers interested in such roses, the Board evaluated the net sales figures as sufficient. Due to a consistent use of the trademark and the advertising and sales volume achieved therewith, continuing commercial exploitation of the mark was proven, which was sufficient to maintain a market share for the goods protected under the trademark in two Member States of the European Union, namely Germany and the Netherlands.
The lower the sales figures under a trademark are, the more effort is required by the trademark owner to explain the specific market and the consequences resulting therefrom in connection with the realistic volumes of goods to be sold under the relevant trademark. While there is established case law relating to expensive goods or exclusive markets with regard to which low turnover figures can be sufficient, there is little case law linked to goods that are relatively cheap and that address a general, albeit limited, market and which, as in the case of garden roses, is characterized by a high number of different varieties, with each variety bearing its own trademark.
Dr. jur. Gert Würtenberger – Lawyer at WürtenbergerKunze RA