Reber Holding brought an opposition against Wedl & Hofmann’s Community trademark application

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for coffee and sugar in class 30, based on its German trademark “Walzertraum” registered inter alia for chocolate goods in class 30. When the applicant requested proof of use, Reber Holding provided evidence of use of the mark for hand-made pralines produced and sold in its shop in Bad Reichenhall, a small city in the Bavarian Alps, with sales of 40 to 60 kg per year, and Internet advertising. The Opposition Division considered this proof of genuine use and rejected the application because of likelihood of confusion. OHIM’s Fourth Board of Appeal reversed, Case R 623/2008-4, concluding that the evidence of use was not sufficient to show genuine use. Reber Holding appealed, and the General Court dismissed the appeal (Case T-355/09). Upon Reber Holding’s further appeal, the Court of Justice dismissed the appeal.

The decision is not noteworthy because of its outcome – the Court of Justice almost always (in more than 90 % of all appeals on points of law) confirms General Court judgments, may they appear contestable or not. The principal reason for this is that the Court of Justice considers most of the decisions based on factual findings which it must accept, unless the evidence has been distorted. We are not aware of a single trademark case where the “distortion of evidence” succeeded. It is also not noteworthy for the manner in which it was decided, namely by a three-judge panel (the Seventh Chamber, made up of Judge da Cruz Vilaça, President of the Chamber, and Judges Arestis, Rapporteur, and Bonichot), without an Advocate General. (Nowadays, a large proportion of these appeals is decided by reasoned Order when found manifestly inadmissible or manifestly unfounded). Not noteworthy either is the fact that the judgment is available only in the language of the proceedings, German, and French, the language used by the Court. This has become the norm in many cases – although the unavailability in other languages, notably English, does not facilitate the spreading of the knowledge of the Court’s judgments.

Noteworthy is the judgment for the legal conclusions it makes on some important issues of genuine use.

First, the Court states that “commercial use” is not in itself sufficient to be genuine (our translations):

[32] Contrary to the Appellant’s opinion the examination of genuine use of an earlier mark cannot be limited to mere finding of a use of the mark in the course of trade, because the use must in addition be genuine within the meaning of the wording in Article 53 (2) Trademark Regulation. Furthermore the evaluation of “genuine use” of a mark depends from the characteristics of the respective goods or services on the respective market. Therefore, not any proven commercial use can be classified as genuine use of the mark in question.

Many had understood the Court’s leading cases – Ansul and La Mer – as actually standing for the principle that “genuine” means actual use in a commercial sense, regardless of the volume and scope of use, at least for a national mark, while size of the market and territorial scope might become relevant for Community trademarks. It is troubling for the owners of earlier marks, which are actually used even though at a small scale, that they may not be enforceable vis-à-vis later Community trademarks.

Second, as regards the argument made by Reber Holding that the genuineness of its use should be measured in regard of the goods for which it had actually used the mark (hand-made pralines), and not for the broader category of goods for which the mark is registered (chocolate goods), the Court rejects this, as follows:

[42] In the present case it is established that the national word mark Walzertraum is registered for “pastries, confectioneries, chocolates, sugar goods” and not for “pralines”. The Court thus correctly started from the position that the goods of the earlier mark of the appellant are “chocolates”.

[44] In the evaluation the examination carried out by the Fourth Board of Appeal of OHIM the court thus correctly considered the German market for chocolates, which means that the alleged error of an infringement of the obligation to state reasons must be seen as unfounded.

This is also a disturbing approach because it is (or perhaps we should say: was) generally assumed both for national and for Community trademarks that what is relevant are the goods (or services) for which the mark is actually used, not what the registration says. When the use is not made for all the goods for which the earlier mark is registered, only the actually used goods are taken into account. In fact, Article 42 (2) CTMR, also applicable to national marks, provides so explicitly:

If the earlier (…) trademark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

The Court in our opinion disregarded this explicit mandate. Further appeals are not available. But perhaps this decision will in the end remain unnoticed, if only for the availability in German and French only.