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The General Court has upheld a decision of the Board of Appeal which found than an opponent to a proposed EU figurative trade mark featuring the words, “Power Edge” had failed to establish genuine use of its earlier mark, “EDGE”.
The applicants in the case (Imran Hussain et al) had originally filed an application for registration of an EU figurative trade mark (above left) featuring the words “Power Edge” in class 3 covering: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’ and class 8 covering: ‘Hand tools and implements (hand-operated); cutlery; side arms; razors’.
The opponent (Eveready Battery Company Inc.) opposed the mark applied for in respect of the goods in class 3 and in respect of ‘razors’ in class 8 based on their earlier EU mark, EDGE. The earlier mark covered goods in class 3 corresponding to the following description: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’.
The Opposition Division initially partially upheld the opposition in respect of the goods ‘soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices’ in class 3 and ‘razors’ in class 8. The Second Board of Appeal upheld the applicants’ appeal on the grounds that genuine use of the earlier mark had not been established.
The opponent subsequently took the case to the General Court arguing that the Board of Appeal’s findings that genuine use of the EDGE mark had not been established were erroneous.
Evidence of genuine use
As its evidence of genuine use of the earlier mark, the opponent had provided a sworn statement, six invoices and clippings and pictures of labels and displays relating to EDGE shaving gels. The General Court confirmed the Board of Appeal’s finding that this evidence was insufficient to prove genuine use.
The Court found that the figures included in the sworn statement were imprecise and mere approximations of the units sold rather than a precise number. On this basis the Court reminded the opponent that “genuine use cannot be proved by means of probabilities and suppositions but must be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned”. Furthermore the statement had been drawn up by one of the opponent’s trade mark officers and no other evidence had been provided in the documents produced by the opponent to corroborate the statement. On this basis the Court confirmed that the statement could not be attributed any probative value.
In relation to the other evidence provided, the Court found that the invoices corresponded only to three months during the relevant five year period and moreover these three months were during the last eight months of the five year period. Furthermore they demonstrated that only a low volume of shaving gel units had been sold. The labels and leaflets provided did not add any information as to the duration or extent of the use of the goods at issue. This evidence was therefore insufficient to establish genuine use of the earlier mark.
In its findings the Court made a point of stating that it was not necessary for a trade mark to have been put to continuous use over the course of the relevant period for the purpose of proving genuine use. Instead it was important to ensure that the trade mark had been put to genuine use during that period. In making this assessment it is necessary to establish “whether the scale and frequency of the use of that mark was such as to demonstrate its presence on the market in an actual and consistent manner”. The Court made a point of reminding the parties that each case was to be judged on its own merits.
Change of proprietor
The Court also confirmed that the fact an earlier mark had changed proprietor during the relevant period (as was the case with the earlier EDGE mark) did not change either the duration of that period or the use required to constitute genuine use. The opponent still had to demonstrate genuine use during the relevant period.