A recent decision of the General Court provides a useful review of the requirements for proving genuine use of a mark, and also shows that use of a mark in a single Member State of the EU may be sufficient to prove genuine use of an EUTM. This has been the subject of some controversy over the years, with many cases demonstrating that even quite substantial use in a single Member State will not necessarily be sufficient where an EUTM is concerned. This decision refers back to the much-discussed “ONEL / OMEL” case, to support the view that use in a single Member State can be sufficient, depending on all the facts and circumstances of the particular case.
On 26 May 2015, INTAS Pharmaceuticals Limited (“INTAS”) filed EUTM Application No 014153811 for the word-mark INTAS for goods in Classes 5 & 10. The goods applied for were prescription-only medicines and injection apparatus and instruments, including syringes pre-filled with prescription-only medicines.
Spanish company Laboratorios Indas, SA (“Indas”) opposed this application based on their prior rights over marks containing the word “INDAS”, including EUTM Registration No 003380524 in Classes 3, 5, 10, 16 & 25 and Spanish Registration No 2698682 in Classes 5 & 16, both for the mark INDAS & Device (below):
The protected goods under Indas’ prior registrations included pharmaceuticals and sanitary products, and disposable products and components for use during medical or surgical procedures. Both prior registrations had been registered for more than 5 years and Indas was required to prove genuine use of these prior marks. Indas, a Spanish company, submitted evidence of use in Spain only.
The opposition was successful, and when INTAS appealed, the Board of Appeal upheld the decision of the Opposition Division. The Board of Appeal held that there was a clear likelihood of confusion on account of the overall similarity of the marks at issue and the similarity of the goods covered, even where the relevant public displayed a high level of attention. The Board of Appeal found that genuine proof of use of both of the earlier marks had been submitted for the relevant goods.
INTAS then appealed to the General Court to annul the decision of the Board of Appeal and reject the opposition, or alternatively to alter the decision to state that the opposition should be remitted to the Opposition Division of the EUIPO. INTAS alleged that the Board of Appeal had erred in finding that genuine proof of use of the earlier marks had been submitted. When filing the appeal, INTAS had also alleged that the Board had erred in finding that there was a likelihood of confusion, but this claim was withdrawn at the hearing.
At the Hearing, INTAS put forward the following 3 arguments:
- That the evidence of use supplied by Indas showed use of “INDAS” as a business name rather than as a trade mark;
- That the Board had not assessed whether the proof of use was in connection with the relevant goods protected under the earlier marks; and
- That the evidence submitted included material which had not been translated into one of the languages of the opposition and that the Board had erred in taking into this evidence into account.
Both Indas and the EUIPO submitted that these arguments were inadmissible, on the basis that they had not previously been presented to the Board of Appeal but were being submitted for the first time to the General Court. The Court considered this and held that the first two arguments could be interpreted as developing arguments which had been submitted in the original appeal, but that this could not be said for the third argument (ie the lack of an English translation of some of the evidence). That argument was therefore deemed inadmissible.
The General Court then assessed the evidence of use which had been submitted by Indas. The evidence was found to show use of the earlier marks both in the forms in which they were registered and in various forms of those marks which did not alter their distinctive character.
One very important point that was specifically addressed in this decision was whether use of a trade mark in a single Member State is sufficient to prove genuine use in the European Union. Indas had relied on a national Spanish registration and an EUTM registration in the opposition proceedings, so the relevant territories to prove genuine use were Spain and the EU. The two earlier registrations protected different goods. The evidence submitted included invoices in Spanish, addressed to various customers including pharmacies in a number of Spanish cities; catalogues in Spanish; price lists in Spanish and advertisements which appeared in the Spanish press. No use outside Spain had been demonstrated.
INTAS relied on an earlier judgment of the Court of Justice in the Leno Merken case (more often known as the ONEL / OMEL case, C-149/11, EU:C:2012:816, 19 December 2012) to argue that an earlier EU trade mark must be used in a larger area than just a single Member State for its use to be regarded as genuine, except in certain specific circumstances. The General Court reviewed this earlier judgment and found that, on the contrary, the Leno Merken judgment supported the view that use in a single Member State – or even in a single city in a Member State – may be sufficient to satisfy the requirement for genuine use of an EUTM. In the words of Advocate General Shapston in her Opinion on the Leno Merkin case:
“Whether a Community trade mark has been used in one Member State or several is irrelevant. What matters is the impact of the use in the internal market: more specifically, whether it is sufficient to maintain or create market share in that market for the goods and services covered by the mark and whether it contributes to a commercially relevant presence of the goods and services in that market. Whether that use results in actual commercial success is not relevant.”
(Leno Merken, C-149/11, EU:C:2012:422, point 50).
The General Court found that Indas had supplied evidence showing use that was sufficient to maintain or create market share in the market concerned and to contribute to a commercially relevant presence of the relevant goods protected under their earlier EUTM as well as under their earlier Spanish registration. Accordingly, the Court held that genuine use had been proved in the relevant territories and that Indas was entitled to rely on both registrations in the opposition proceedings.
The General Court also upheld the findings of the Opposition Division and the Board of Appeal that there was a likelihood of confusion. The action by INTAS was therefore dismissed and the opposition was held to have succeeded.
This decision will be a useful precedent in future cases where the owner of an EUTM registration can only show use in a single territory within the EU. However, it is important to remember that the use will need to be sufficient to create or maintain market share in the relevant market for the relevant goods or services and to contribute to a commercially relevant presence of the goods or services in that market. This is likely to be easier to demonstrate for goods or services which target specific types of customers and have a small market than it would be in relation to goods or services aimed at the general population. A trade mark attorney will be able to advise on what sort of evidence will be required to show genuine use of a trade mark.
Decision date: 7 November 2019
Judgment of the General Court (Ninth Chamber)
Composed of S. Gervasoni, President, L. Madise (Rapporteur) and R. da Silva Passos, Judges,
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.