"But you never asked ..."

An interesting little decision on the mechanics of proof of use of trade mark cropped up in the Court of First Instance of the European Communities last Friday in Case T‑450/07, Harwin International LLC v Office for Harmonisation in the Internal Market, Cuadrado, SA. Harwin registered the figurative Pickwick mark (right) as a Community trade mark for ‘clothing, footwear, headgear’ in Class 25. Cuadrado sought cancellation, citing its earlier word mark PICK OUIC and figurative mark (below left), both of which were registered for various items in Class 25, and maintaining that on account of the similarity of marks and overlap of goods there was a likelihood of confusion.

The Cancellation Division annulled the registration in a decision which was upheld by the Board of Appeal. According to the Board, Harwin's appeal was based on the complaint that the Board had not considered whether Cuadrado had demonstrated use of its earlier marks, but the Cancellation Division didn't need to do so since Harwin hadn't expressly asked it to. Having failed to ask the Cancellation Division to assess whether there was use of the earlier marks, Harwin was too late to do so before the Board of Appeal.

The Court of First Instance allowed Harwin's appeal. When Cuadrado submitted evidence of use of its earlier marks before the Cancellation Division, Harwin commented that that evidence was insufficient to prove genuine use. In response, Cuadrado produced additional documents on proof of use. The CFI continued:

"23 For OHIM, the effect of the absence of an express request for proof of use, which should, for example, have been made by [Harwin] when OHIM invited it to submit its observations on the application for a declaration of invalidity, was to deprive [Harwin] of any opportunity to dispute the genuine use of the earlier mark relied on in support of the application for a declaration of invalidity. In the present case, OHIM refused to treat the observations submitted on that issue by [Harwin] in its response to the application for a declaration of invalidity as an express request ....

24 Such an approach does not take into account the relevant evidence submitted on that issue in due time by the parties to the Cancellation Division and, subsequently, to the Board of Appeal.

25 So far as the principles underlying it are concerned, the system provided for by Article 56 of Regulation No 40/94 ... must be described as follows:

– the proprietor of an earlier trade mark is obliged to prove the use of its mark only if that use is challenged by the proprietor of the trade mark which is the subject-matter of an application for a declaration of invalidity;

– in the absence of such a challenge, OHIM may confine itself to considering whether a likelihood of confusion exists, without considering proof of use;

– where there is such a challenge of the use, whether by means of a request for proof of use submitted by the proprietor of the trade mark which is the subject-matter of an application for a declaration of invalidity or by means of that party challenging the evidence submitted by the proprietor of the earlier mark to prove use, OHIM is required to examine the issue of proof of use prior to that of the existence of a likelihood of confusion.

26 Concerning the literal interpretation of the words ‘[i]f the proprietor of the Community trade mark so requests’ used in Article 56(2) of Regulation No 40/94, it must be observed that they may be understood as referring to a request such as that set out in the applicant’s observations on the application for a declaration of invalidity. That request was furthermore fully understood by the applicant for a declaration of invalidity, since it produced additional evidence in order to reply to the applicant (see paragraph 21 above)....

29 ... the request for proof of use was made by [Harwin] expressly and timeously. In any event, it was fully understood by [Cuadrado], which answered it in its response to the observations submitted by [Harwin] on that subject. ...

32 The situation here is not comparable to that which gave rise to the judgment in MUNDICOR .... In the present case, the issue of the use of the earlier mark was the subject of an exchange of arguments between the parties. That exchange, which was commenced in the application for a declaration of invalidity, was expressly instigated by[Harwin] both in its observations relating to that application for a declaration of invalidity and again following those observations, without [Cuadrado] being mistaken as to the nature of that exchange.

33 Consequently, in the light of the observations submitted by [Harwin] concerning the genuine use of the earlier mark in response to the observations made on that issue by [Cuadrado] and following which the latter submitted new evidence in that regard, the Board of Appeal infringed Article 56(2) and (3) by holding in the contested decision that the issue of the genuine use of the earlier mark did not have to be examined by the Cancellation Division".

The IPKat thinks this is correct, but notes the contrast between Harwin -- which didn't expressly say what it meant even once -- and the CFI which tends to say the same thing over and over again. Merpel laments the annoying fact that both parties are 'applicants', Cuadrado being the applicant for invalidity and Harwin being the applicant for annulment of the Board's decision; these appellations change in accordance with the nature of the proceedings as they wend their way from Cancellation Division to Board of Appeal to CFI to Court of Justice, which can confuse for the sake of achieving clarity. For the benefit of readers of the decision and users of the Community trade mark system it would be much easier if the owner of the challenged mark were simply referred to as the 'proprietor' throughout.


Pickwick Papers here
Picnic Papers here
Picnic Cat here