Alder/Halder: challenging points not raised on appeal

An interesting constitutional point cropped up in the General Court's decision in Case T‑209/09, Alder Capital Ltd v Office for Harmonisation in the Internal Market, Gimv Nederland BV,  delivered yesterday. It arose within the context of a bonny battle over the cancellation of Alder's Community trade mark ALDER CAPITAL, which has been registered for financial services in Class 36.

The application for cancellation came from Halder Holdings BV (now Gimv Nederland BV), pleading earlier use of earlier registered and unregistered marks consisting of Halder, Halder Holdings, Halder Investments and Halder Interest. Likelihood of confusion was argued. At this point the story is taken up by the IPKat's friend Marlou L.J. van de Braak (who incidentally was acting for Gimv):

"Before the Cancellation Division the case was decided on the basis of Gimv’s earlier trade name rights, but considered that there had been no genuine use of Gimv's earlier trade marks. When Alder Capital appealed, Gimv asked the Board of Appeal to reconsider the Cancellation Division's findings on proof of use, citing Article 8(3) of the Rules of Procedure which provides that the defendant may, in his response, seek a decision annulling or altering the contested decision on a point not raised in the appeal. The Board of Appeal did just that, accepted that the earlier trade marks had indeed been genuinely used, then held in favour of Gimv on the basis of its earlier trade marks, instead of the earlier trade names.

Alder Capital again appealed and claimed that Community Trade Mark Regulation does not allow for an ancillary appeal and that Article 8(3) of the Rules of Procedure is invalid because the European Commission did not have the power to introduce, by “tertiary” legislation, additional ways to appeal a first instance decision. Gimv argued that, regardless of this argument, the Board of Appeal may still exercise any power within the competence of the Cancellation Division and is thus entitled and even obliged to examine genuine use of the trade marks on its own motion, whether Gimv requested them to do so or not. Gimv also claimed, based on case law, that a separate appeal is unnecessary if one is not adversely affected in first instance; Article 8(3) is merely a rule of procedural efficiency and not legislation creating the possibility of ancillary appeal. 

The General Court ruled that the Board of Appeal was indeed required to carry out a full examination, in terms both of law and of fact.

With regard to genuine use, some interesting considerations are that:

- Use of the term “halder” independently of any mention of its corporate form or investment fund number constitutes use as a mark for the services referred to in the advertisements;
- Press articles can in some cases constitute evidence of use of a mark, since the list of permissible evidence is not exhaustive;
- The fact that the press articles were written by a journalist, and not by Gimv for advertising purposes, cannot mean that they have no evidentiary value;
- The use of “halder” to designate investment funds, which frequently take the form of separate companies, constitutes not only trade name use but also use as a mark for the subcategories of financial services of such funds, since that use establishes a link between the sign Halder and such financial services;
- The fact that the names of the funds (Halder I, Halder II etc.) are composed of the term “halder”, to which a Roman numeral has been added, does not call genuine use into question since, because of their brevity, weak distinctive character and ancillary position, those additions do not alter the distinctive character of the mark in the form in which it was registered;
- For genuine use there is no requirement that the services provided belawful or that the mark must be used in good faith".

The IPKat notes the point that press articles written by a journalist, and not by Gimv for advertising purposes, cannot be said to lack evidentiary value. He has long believed that third party use, even if unauthorised -- for example by importers of infringing grey goods -- should constitute genuine use because its effect is to fulfil the essential function of the mark.

Interesting facts about Alder here
Alderman here
Aldermaston here