The General Court, in its ruling of March 27, 2014, case T-47/12, stated about the notion of evidence of genuine use of an earlier trademark into an opposition proceedings.
The General Court ruled on the action filed by Intesa San Paolo S.p.A. (“Intesa”) against the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM), which refused the registration of Intesa’s figurative sign
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for goods and services falling within classes 9, 35, 36 e 38, due to the opposition filed by Equinet Bank AG and based on the earlier Community trademark “Equinet” registered for the goods and services of the same classes 9, 35, 36 and 38.
Intesa in support of its application raised a single plea, alleging infringement of Article 42 of Regulation No. 207/2009 on the Community trademarks (“CTMR”) that provides that “[i]f the applicant so requests, the proprietor of an earlier Community trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years […]”.
The General Court stated that two inseparable tasks have to be performed when assessing the genuine use of a trademark: (i) to determine whether the mark at issue has been put to genuine use in the European Union and (ii) to determine the goods or services in connection with which the earlier trademark is registered and genuinely used.
Due to the above, the General Court affirmed that the genuine use of the earlier trademark has been demonstrated only in relation with financial services, valuation and research services and public relation services, which were not included among the services in respect of which the earlier mark is registered. Thus the General Court upheld the application filed by Intesa.