Peter Gustav Olson July 25 2016 New evidence cannot be filed for first time at General Court NJORD | Intellectual Property - European Union Peter Gustav Olson Intellectual Property IntroductionFirst Board of AppealProofCommentIntroductionIn Danila Facchinello v Office for Harmonisation in the Internal Market (Case T-81/15) the General Court, ruling on the infringement of Article 51(1)(a) of EU Regulation 207/2009, was asked to annul a decision of the First Board of Appeal of the EU Intellectual Property Office (EUIPO – formerly the Office for Harmonisation in the Internal Market) insofar as the First Board of Appeal had revoked an EU trademark (formerly a Community trademark) on the grounds that the evidence provided by its proprietor could not establish genuine use of the mark. The General Court dismissed the action entirely, confirming the appeal board's decision.The intervener, Olimpia Splendid SpA, asked the EUIPO cancellation division to revoke the rights of the proprietor of the figurative trademark SYNTHESIS due to non-use. SYNTHESIS was registered in 2004 for goods and services in Classes 7, 9 and 11 of the Nice Classification and was more than five years old.On the basis of an overall evaluation of the evidence provided, the cancellation division confirmed an EU trademark registration for air-conditioning apparatus (in Class 11), but declared the mark revoked with effect from September 16 2009 for goods and services in Classes 7 and 9.First Board of Appeal Olimpia brought an action before the First Board of Appeal requesting revocation for Class 11 on the grounds that evidence provided by the EU trademark proprietor was insufficient to prove serious and real use of the mark in the period under consideration.Olimpia claimed that only one of the documents provided as evidence effectively showed use of the mark. The evidence consisted of copies of invoices showing an insignificant amount of air-conditioning equipment sold in European and non-European countries during a four-month period. One invoice in particular was considered by the cancellation division due to its substantial total amount of €94,797.75. However, the invoice description did not clearly show how much of the total referred to sales under the disputed trademark.Ms Facchinello requested that the appeal board confirm the decision of the cancellation division in relation to goods in Class 11 and to declare the registration valid for Class 7.Proof According to Rule 40(5) in conjunction with Rule 22(3) of the EU Trademark Implementing Regulation, proof of use must consist of indications concerning the place, time, extent and nature of use of the contested trademark for the goods and services for which it is registered. In accordance with settled case law, this proof can include:the trademark's market share;the intensity, geographical scope and duration of use of the trademark;the amount invested by the company in promoting the trademark;the proportion of the relevant public that identifies the product with a certain company through the trademark; andrulings of chambers of commerce and industry or other professional associations.The First Board of Appeal found that the proof of use was insufficient to confirm the trademark registration for products in the relevant classes and consequently revoked the mark.Facchinello appealed to the General Court. As part of the appeal, she filed additional invoices proving the sale of air-conditioning equipment with the SYNTHESIS mark in the relevant period. However, the court held that this new evidence was inadmissible, as it had not been filed before the case came to court. According to Article 65(2) of the European Trademark Regulation, actions before the court against decisions of the boards of appeal may be brought on the grounds of:lack of competence;infringement of an essential procedural requirement; orinfringement of the treaty, regulation or any rule of law relating to their application or misuse of power.It follows that under the terms of Article 65(2) the court can review the legitimacy of decisions of the EUIPO boards of appeal, verifying where necessary whether a correct juridical qualification of the facts of the dispute has been given or whether the evaluation of facts submitted has been spoiled by mistakes. However, the court cannot rule on the substance of documents and evidence submitted to it for the first time.InvoicesWith reference to the invoices previously provided, the court considered them as indicative elements related to the geographical scope of use. Nevertheless, those elements – even if considered as a whole – did not demonstrate 'real' use of the mark under the meaning given by case law.The appellant's claim focused particularly on a March 8 2010 invoice for €94,797.75 concerning exports to the United Kingdom, which was not considered by the First Board of Appeal in its decision. According to the court, the invoice did not distinguish with precision the three types of product referred to, insofar as the description mentioned three different models of air-conditioning equipment (Synthesis S13HPCPE, Millennium M13HPCPE and BABY B95HPCPE). Further, it was not possible to identify which part of the whole amount referred to the sale of the Synthesis air-conditioning apparatus because the individual amounts of the products listed were hidden in the copy of that invoice as filed. Facchinello also failed to prove that the Millennium M13HPCPE and BABY B95HPCPE were sold under the same SYNTHESIS mark; nor did she lodge a clearer copy of the invoice.Other evidenceThe court held that the other evidence introduced before the EUIPO, besides the invoices considered by the court, was insufficient to show the precise volume of the transactions related to the products countersigned by the disputed mark or to prove a constant use of the mark in the relevant period.The court therefore dismissed Facchinello's appeal and upheld the First Board of Appeal's decision to revoke the SYNTHESIS mark concerning goods in Class 11.Comment The court's ruling stated that the notion of 'real use' of the mark, under the meaning of Rule 22(3) of the EU Trademark Implementing Regulation, must not be interpreted as appraising the commercial success or contributing to the economic strategy of an enterprise, and not even to reserving the trademark's protection for commercial transactions for a quantitatively significant amount. As a trademark serves to guarantee the identity of origin of the goods and services for which it has been registered, its use must create and maintain a sales market for those goods. Consequently, the real use of a mark cannot be shown from probabilities, but must be founded on concrete and objective elements proving a real and sufficient use of that mark in the relevant market. This case clearly demonstrates that it is incumbent on an EU trademark owner to have hard evidence of use readily available in case of attack for non-use. If evidence is not filed with the board of appeal, a registration may be cancelled, regardless of the actual use of the mark in Europe.For further information on this topic please contact Peter Gustav Olson at NJORD Law Firm by telephone (+45 33 12 45 22) or email ([email protected]). The NJORD Law Firm website can be accessed at www.njordlaw.com.