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Excellent Brands JMI Ltd (‘Excellent Brands’) applied for the Applicant’s Marks (above left) in December 2012. Marcas Costa Brava, SL (‘Costa Brava’) opposed the applications on the grounds that the marks are confusingly similar to the Earlier Mark (above right). Costa Brava were required to file proof of use of the registration they were relying on in the opposition as it was over five years old. The opposition succeeded. Excellent Brands appealed to the Fifth Board of Appeal, who granted the appeal and annulled the decision of the Opposition Division on the grounds that the evidence submitted by Costa Brava was not sufficient to prove genuine use. In particular any evidence provided by Costa Brava showed that the mark had not been used as registered for the relevant goods and services.
Costa Brava appealed to the General Court alleging in particular:
- the Board of Appeal incorrectly assessed the territorial scope of the use of the Earlier Mark;
- the form of the use only differs minimally from the form registered;
- the evidence which had been submitted is capable of proving genuine use; and
- the Later Marks is confusingly similar to the Earlier Mark.
In dismissing the appeal, the General Court found that:
- The Board of Appeal had been correct in finding that the evidence of use provided by Costa Brava only established proof of use in two of the provinces of Catalonia: Tarragona and Barcelona. Use was not proved in the whole of Catalonia. In particular, in respect of the province of Girona, Costa Brava had merely produced a copy of the extract from the central trade register of Spain, and in respect of the province of Lleida had only provided a screenshot from a website that showed a postal address in the province. No actual proof use in these provinces was provided.
- Though the Board of Appeal found that the form in which Costa Brava had used the mark differed from the way in which the Earlier Mark was registered, it had left open the possibility that the variant could be taken into account. As such Costa Brava’s second plea was ineffective.
- In relation to the evidence produced by Costa Brava:
- Costa Brava had provided as evidence certain invoices which showed that goods had been sold under the acronym CC. However Costa Brava had provided contradictory evidence as to what ‘CC’ stood for. As such the Board of Appeal had not erred in finding that these invoices did not prove use.
- Affidavits provided by Costa Brava did not explain the figures they related to and only gave general global figures which were not broken down between the relevant goods. As such the Board of Appeal was right in finding that the affidavits did not provide relevant figures of sales of the relevant products.
- Some promotional and advertising material which was provided pre-dated the relevant period. Other promotional materials were undated. By themselves, and in the absence of other evidence these were not enough to prove genuine use.
Therefore, genuine use had not been proved. Since Costa Brava had not proved genuine use, it was unnecessary to consider whether the Applicant’s Marks are confusingly similar to the Earlier Mark.
Cases T-686/15, T-687/15, T-689/15, T-690/15 and T-691/15