by Gert Würtenberger
Monopolization of a sign is only justified if its proprietor intends to use the sign. For this reason, following the expiry of a 5-year grace period starting with the registration of the sign as a trademark, it is no longer enforceable if it is not used to the legally required extent. Moreover, third parties may seek the revocation of the EUTM either in its entirety if it has not been used at all or in relation to the goods and services for which it has not been used.
One of the requirements for a trademark to have been used in compli-ance with the use obligation is that it is used either as a trademark in its registered form or in a form that may differ in (some) elements that do not alter the distinctive character of the registered form, regardless of whether the trademark in the form as used is also registered in the name of the proprietor or not.
Whether the distinctive character of the registered mark has been al-tered by the additional elements used to such an extent that its distinc-tive character was changed requires, according to case law of the CJEU, an assessment of the distinctive and dominant character of the added elements based on the intrinsic qualities of each of these elements and the relative position of the different elements within the arrangement of the trademark.
Proof of Use in Opposition Proceedings
In opposition proceedings, the Opponent must submit proof of use of the earlier trademark(s) on which the opposition is based if requested by the Applicant. In preparing the proof of use documents to be submitted within the deadline set by the Office, the Opponent must observe two important aspects:
- Any material to be filed as proof of use must be as complete as possible, not only showing how the trademark has been used on or in close connection with the goods or in relation to services but also to which extent (timewise and geographically) such use has occurred. Moreover, the evidence has to reflect the use in the relevant time period preceding the date of filing or the priority date of the opposed EUTM application.
- Such evidence must be filed within the time limits to which such submissions are subject under the provisions of the EUTMR. According to Article 95 (2) EUTMR, the submission of facts and evidence by the parties remains possible after the expiry of the time limits only if, firstly, such facts or evidence submitted for the first time outside the time limit are prima facie relevant for the outcome of the case and, secondly, if these facts and arguments have not been produced in due time for valid reasons, in particular where they are merely supplementing relevant facts and evidence that had already been submitted in due time, or are filed to contest the findings made or are examined by the first instance of its own motion in the decision subject to appeal.
Genuine use in the territory where the opposition marks are protected that has occurred during the 5 years preceding the date of filing or the date of priority of the opposed trademark has to be considered by means of an overall assessment of the documentation submitted by the Opponent. The Opposition Division, and subsequently the Board of Appeal, has to take into account all relevant factors of the case. In particular, for such an assessment regard must be made of all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark. According to Article 10(3) EUTMDR, the indications and evidence required to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the Opponent’s trademark for the relevant goods or services. Such requirements are cumulative. Above all, such documents must prove use of the mark in its registered form. Differences in the mark used – in comparison to the registered form – are acceptable if, generally speaking, the form used does not differ materially from the mark as registered.
Whether these conditions are given is subject to a broad discretion of the Boards of Appeal.
Recent Case Law
In a most recent decision, the Fifth Board of Appeal had to decide whether registrations of the tire manufacturer Michelin representing the letter X in the subsequent reproduced forms
that were the subject of various national French and International trade¬mark registrations covering a number of Member States of the European Union had been genuinely used in the light of the proof documents submitted by Michelin.
It was undisputed that none of the evidence submitted by the owner had shown use of the mark exactly as it had been registered, but in combination with other elements:
MICHELIN X® MULTI™
MICHELIN X® MULTI™ WINTER Z
MICHELIN AIR X TIRES
MICHELIN AIR X RADIAL
MICHELIN X® Works™ XZY
MICHELIN X® INCITY™ XZU
The Opposition Division found that the letter “X” as used together with other letters and numbers was to designate technical characteristics of the Michelin tires, namely their tread pattern. Consequently, the letter “X” in such configurations would not be perceived as identifying the trade origin of the goods at issue, but only as designating a characteristic of the tires. The earlier signs were not depicted as independent marks in different sizes and/or typeface. The Opposition Division hence came to the conclusion that use of the “X” as shown in the submitted documents could not be regarded as trademark use.
Although some pieces of evidence submitted had shown the sign “X” used separately in close connection with the symbol ®, such use did not occur on the market on the goods at issue; rather, use had occurred merely on invoices, the trademark owner’s websites, and the like.
Thus, the Board of Appeal had to decide whether the distinctive character of the registered forms of “X” as shown above had been safeguarded through the use of the combinations depicted or referred to in the pieces of evidence and whether the variations had taken such an influence on the trademark “X” that its distinctive character had been changed in the sense of the relevant provision.
The Board concluded that, based on an overall assessment of the evi-dence provided, it was proven that the “X” used in combination with the mark “MICHELIN” and/or additional words and figurative elements did not alter the distinctive character of the “X” as registered. This conclusion was based on the consideration that it was quite common in the relevant field to use several marks or signs simultaneously. In particular, the Board of Appeal pointed out that products often do not bear only their individual mark, but also the mark of the business (“house mark”) or product group. In these cases, the registered mark was not used in a different form, but two independent marks were validly used at the same time. For this reason, the Court had already confirmed that the condition of genuine use of a registered trademark may be satisfied where it is used as part of another composite mark or where it is used in conjunction with another mark, even if the combina-tion of the marks itself is registered as a trademark.
The use of a registered trademark in a form that does not reflect the trademark in its essential characteristics as registered involves the risk that such use will not be regarded to be in accordance with the use obligation. In the case discussed, the use of the letter “X” should have been regarded right from the outset as use that does not influence the distinctive character of the registered mark, had the Opposition Division correctly taken into account the different forms in which the registered trade¬mark “X” had been used in combination with the company name and/or with descriptive word/device elements. The question to which extent variations of a trademark are acceptable that do not change the distinctive character of the registered form may be more complex, in particular, if the trademark as such has been changed by adding design elements.
Bearing in mind the risks that the trademark cannot be enforced either in infringement or opposition proceedings it might be advisable in question¬able cases to file a new application for the changed trademark.
Dr. jur. Gert Würtenberger – Lawyer at Würtenberger RA
Photo: Wikipedia – Author: Unknow, Source: Andrew Helme, Date between circa 1965 and circa 1970, Description: Agincourt Square c. 1965-1970, view of old fashioned Michelin omnibus and two Michelin men with bystanders behind Rolls statue. Monmouth Museum Identity Number: M4488