In Biotronik SE & Co. KG v OHIM, Case T-416/11 the EU General Court upheld a decision of the Board of Appeal and rejected an opposition to a Community trade mark (CTM) raised by the proprietor of an earlier trade mark, on the grounds that the proprietor could not prove genuine use of its mark.
In October 2006 Cardios Sistemas Comercial e Industrial Ltds filed an application to register a CTM for CARDIO MANAGER, in relation to goods falling within Classes 9 and 10, namely for medical apparatus. Biotronik SE & Co. KG filed a notice of opposition on the grounds of its earlier mark CARDIOMESSENGER, registered in Germany for goods in Classes 9 and 10.
Cardios Sistemas made a request that Biotronik provide proof that its earlier mark had been put to genuine use. In response to a request from the Office for Harmonisation in the Internal Market (OHIM), Biotronik produced various extracts from newspapers and medical journals, instruction manuals for a device known as the CardioMessenger and printouts from Biotronik’s website, along with examples of packaging, each of which bore the sign CARDIOMESSENGER during the relevant period. Biotronik further sought to rely on a formal written statement made by one of Biotronik’s Vice-Presidents.
The Board of Appeal held that Biotronik had not proved its earlier mark had been put to genuine use, and Biotronik appealed to the General Court.
Biotronik claimed that the Board of Appeal erred in its assessment of the material provided in demonstrating genuine use of the earlier mark. Article 42(2) of Regulation No 207/2009 sets out that where an applicant for registration of a trade mark requests it, the proprietor of an earlier CTM or national mark who has given notice of opposition must furnish proof that, during the period of five years preceding the date of publication of the CTM application, the earlier mark has been put to genuine use in the Community or relevant Member State in connection with the goods or services to which it relates, or alternatively there must be proof that there are proper reasons for non-use, provided that at that date the earlier mark has been registered for not less than five years. In the absence of proof to that effect, the opposition may be rejected.
Rule 22(3) of Regulation No 2868/95 requires that such proof must relate to the place, time, extent and nature of use of the opposing trade mark. Genuine use will not be established by way of token use for the sole purpose of preserving the rights conferred by the mark, but rather it must have been used in a way that guarantees the identity of the origin of the goods for which it is registered. The General Court noted further that, in order to meet the requisite standard, the mark must be used publicly and outwardly.
In assessing genuine use, the General Court confirmed that all facts and circumstances of the case were relevant in establishing whether or not the commercial exploitation of the mark is real, whether or not such use is viewed as warranted in the relevant economic sector in order to maintain or create a share in the market for the goods, the nature of such goods, the characteristics of the market and the scale and frequency of use of the mark. In determining the factors to be considered, the General Court confirmed that such a review does not need to include an assessment of an undertaking’s commercial success or its economic strategy. It instead emphasised that the process was not intended to restrict trade mark protection to cases where large-scale commercial use has been made of trade marks.
In light of these considerations, the General Court upheld the decision of the Board of Appeal that Biotronik’s evidence, whether assessed on an individual basis or as a whole, could not be relied on as solid and reliable proof of genuine use in the relevant market. On assessing the evidence produced by Biotronik, the General Court relied on factors such as:
- Documents being used solely for internal purposes
- Documents not providing information relating to the time or place in which the device was being put onto the market
- Documents only establishing the existence and function of the particular device, and not referencing the extent or nature of use
- Documents not referring to the CARDIOMESSENGER trade mark itself
This case serves as a reminder for trade mark proprietors that, in order to enjoy the benefits of the rights conferred by registered trade marks, genuine use and commercial exploitation of the mark must be real and sufficient to demonstrate that such use is not merely superficial.