TM Directive -
Evidence of use before and after Registration
Outline text of a talk
by Maggie Ramage
to
The Professional Institutes of Patent Attorneys & Trade Mark Attorneys
in a lecture tour
to
Japan and China
(October 2006)
Slide 1
In this talk, I propose to deal with issues relating to evidence of use filed in Community Trade Mark proceedings, either before or after registration of the trade mark.
Slide 2
First, for avoidance of doubt, I would like to stress that, unlike some other jurisdictions, such as the United States or Canada, it is not necessary to prove that a Community Trade Mark has been brought into use before registration is granted. The question of use before registration arises only when a trade mark has been objected to on “absolute grounds for refusal” under Article 7(1)(b), or 7(1)(c), or 7(1)(d) of the Regulation, on the grounds respectively that the trade mark is devoid of distinctive character, that the trade mark consists exclusively of a sign or indication that may serve in trade to designate a particular characteristic of the goods or services, or that the trade mark consists exclusively of a sign or indication that has become customary in the current language, or in the bona fide and established practices of the trade. If an objection is taken on those grounds, then the Applicant can ask for the trade mark to be considered for registration on the basis that it has become distinctive in relation to the goods or services in consequence of the use that has been made of it prior to the date of Application for registration.
If a trade mark is thought to be descriptive in any part of the Community, it must be refused registration for the whole Community. The Applicant must establish that the trade mark has acquired a distinctive character as a result of the use made of it in all countries of the EU.
Slide 3
Inter-IKEA Systems BV, a well known retailer of furniture in the EU, applied to register Blue & Yellow as its trade mark. This was objected to on the grounds that the basic colours blue and yellow cannot act as a trade mark.
IKEA filed evidence to show that they had used the colours from 1958, that they had 108 stores covering all EU countries except Ireland and Luxembourg, and they had EU sales exceeding €9 billion euros in 2003 alone.
Slide 4
The Examiner did not accept that this evidence had established an acquired distinctiveness throughout the whole EU, saying in particular that the Applicant had not established the consumer would recognise the colours as a trade mark.
Slide 5
The Applicant appealed, and filed 3 surveys, covering Germany, Sweden and The Netherlands. They argued these surveys established that consumers would recognise the colours as a trade mark of Ikea.
Slide 6
Rejecting the Appeal, the Board of Appeal commented that the evidence did not actually show use of the colours on the goods themselves. Therefore, it must be concluded the colour combination would not be recognised as a distinctive sign or badge of origin.
Further, the survey, was flawed, because it asked leading questions, and was restricted to only 3 countries. Therefore, it could not be seen as establishing acquired distinctiveness throughout the whole EU.
Slide 7
When the mark applied for is a word, it will be refused, even if it is descriptive in only one single language of the EU. In that case, evidence must be shown to establish that the word has acquired distinctive character not only in the country of that language, but also in all EU countries where that language might be recognised or known.
Slide 8
In Case R392/2005-4, the Canadian firm, Smart Technologies Inc, applied to register SMART BOARD for an electronic white board. This was objected to, on the grounds it consists of 2 meaningful English words, being descriptive of characteristics of the goods concerned.
The Applicant appealed, and filed some evidence to establish use in the United Kingdom, but filed no evidence that the mark had been used in Ireland (where English is also an official language). The Board dismissed the Appeal, because the evidence was not conclusive on the issue of whether the mark had acquired a distinctive character.
Slide 9
To summarise so far:-
Pre-registration use may be relied upon in certain circumstances to establish whether the mark has acquired a distinctive character prior to the date of Application. However, because the Community Trade Mark is unitary, the evidence must establish a distinctive character throughout the whole EU.
Slide 10
Use following registration is particularly relevant in 2 ways.
The Community Trade Mark must be brought into use within 5 years from the date of grant. This is because the Registration can be enforced against third parties only to the extent of the goods for which it has been used, and the Registration is correspondingly vulnerable to cancellation in respect of any goods for which it has not been used.
Slide 11
Use of the trade mark must be genuine. This is defined in Case C-40/01. The Dutch company Ansul registered the trade mark MINIMAX for “fire extinguishers” many years ago. Issues to do with an application for cancellation were referred to the European Court of Justice for a legal ruling by The Netherlands Supreme Court. These issues related to what constituted genuine use. The European Court of Justice ruled that, because use of a trade mark must guarantee origin, genuine use entails use actually on the market, and not simply internal use within the commercial confines of the trade mark owner. The use must be consistent with the function of the trade mark, which is to create or preserve an outlet for the goods concerned.
Slide 12
The extent to which a trade mark is enforceable, despite having been used on restricted goods, is discussed in Case T-126/03, in which the Spanish subsidiary of the English company Reckitt Benckiser appealed to the European Court of First Instance against a decision of OHIM to do with the precise definition of the goods for which Reckitt Benckiser claimed to have used the trade mark ALADDIN. This trade mark had been registered for “polish for metal”, and Reckitt Benckiser relied upon the Registration in an Opposition. Because it was more than five years old they were required to show what use had been made of it during the preceding 5 years. The evidence showed use only on a cotton pad impregnated with a polishing agent. OHIM refused to accept this showed use on all manner of metal polish.
Slide 13
Reckitt Benckiser appealed to the Court of First Instance, who ruled that use of the trade mark had been shown on goods within the general category of goods for which the trade mark had been registered. It would be arbitrary (or capricious) to say that use on a cotton pad impregnated with polish for metal did not show use on “polish for metal”. The description “polish for metal” relates to a clearly defined category of goods. It would be arbitrary to seek to restrict the scope of protection beyond that clearly defined category of goods. The Court commented that a proprietor must not be stripped of all protection for goods which are not different from those for which use has been proved, provided they belong to a single group which can only be divided in an arbitrary manner.
Slide 14
If we may summarise, therefore, use of a trade mark prior to the Application date can help to establish that the mark has acquired distinctive character, and so enable trade marks that might not otherwise be accepted to be registered. However, the evidence must establish that distinctive character has been acquired throughout the whole of the EU, and not simply in a part of it. Following registration, the mark must be brought into use within 5 years from the date of grant. After that period, the Registration can be enforced only to the extent that it can be proved to have been used, and it will be vulnerable to cancellation in respect of any goods for which it has not been used. The use must be shown to be genuine, and the proprietor must not be denied protection for goods which belong to the same group as those for which use has been shown, if to do otherwise would result in an arbitrary limitation of those goods.
