The Court of First Instance in Helge B. Cohausz (“Applicant”) v OHIM (Case T-409/07) has in this decision, issued a warning to brand owners on the importance of using trade marks for the goods and services for which they are registered. The Court of First Instance emphasised that a declaration from a brand owner that asserts that a trade mark is in use is not by itself sufficient proof of use. To convince the Court that a trade mark has actually been used, a brand owner must be prepared to produce additional evidence that corroborates a declaration of use.

The Court was dealing with an appeal from a decision of the OHIM Board of Appeal which held that the Applicant had not used his German trade mark for COPAT for a continuous period of five years prior to the date of the publication of a Community trade mark registration for ACOPAT. The Applicant had applied for a declaration of invalidity against the owner of the later Community trade mark registration for ACOPAT. The owner of the ACOPAT mark requested that the Applicant provide proof of the genuine use of his trade mark.

The Board of Appeal held that the Applicant had not satisfied this burden of proof for the period from 29 January, 1996 until 28 January, 2001 (“the Relevant Period”). However, the Applicant appealed this decision alleging that the Board of Appeal had failed to take into consideration the declaration he had made confirming that the COPAT trade mark had been used.

The Court examined the declaration to determine whether it should have been regarded as relevant and capable of calling into question the conclusions reached by the OHIM Board of Appeal. Declarations of this nature must prove that the trade mark in question was in use in the relevant territory, during the relevant period for the pertinent goods and services. The Court examined several exhibits to determine if there was sufficient corroborative evidence to support the Applicant’s declaration. These exhibits included a domain name registration certificate and marketing materials containing the trade mark COPAT which were produced to advertise the Applicant’s business in Germany.

The Court found that the additional exhibits, taken together with the declaration, did not demonstrate genuine use of the trade mark in the course of trade during the Relevant Period. The Court held that the mere evidence of registrations for copat.com and copat.de during the Relevant Period did not show that the COPAT mark was put to genuine use during that period. The Applicant had failed to provide admissible evidence that any websites operated at these domain names.

The Applicant’s declaration also stated that marketing handouts, containing the COPAT trade mark had been in print since 1994 and had been distributed to clients and interested persons in Germany since that time. However, the Court held that these handouts were not evidence of genuine use in the Relevant Period as they were not dated. It was therefore not sufficient to merely state, in a declaration, that these marketing handouts pertained to the Relevant Period. There was also no corroboratory evidence that the handouts had actually been distributed to the public during that period.

On that basis, the Court found that the Applicant’s declaration that the trade mark had been used for the Relevant Period did not have “sufficient probative value”.

It is clear from the Court decision that declarations of use will be acceptable proof of use where, for example, turnover and sales figures directly relating to the services offered under the trade mark are provided. Evidence of this nature must be unambiguous and point directly to the use of the mark during the relevant time period at issue.

The judgment is an important reminder that an intention (genuine or not) to use a registered trade mark will not permit the owner to hold onto that trade mark indefinitely. This is particularly important when brand owners wish to rely on registered trade mark rights against others. Those who wish to enforce their registered trade mark rights must be capable of demonstrating actual use of the mark for the relevant goods and services. Token use of a trade mark will not suffice to keep the protection alive and the Community courts impose a particularly high threshold of proof of use in this regard. The Courts will not automatically take the brand owner’s word for it.