If you need to prove use as part of your opposition, this is for you

The following post from former Guest Kat Valentina Torelli explores the question of having to prove use as part of an opposition proceeding and the differences of opinion between the courts in ruing on this challenging question.

"When it comes to conceiving the strategy for filing a trade mark opposition before the EUIPO, and the mark relied upon was registered more than five years after the date of publication [Merpel notes that the relevant point in time is now the date of filing or the date of priority of the EU trade mark application, following the coming into force of Regulation 2015/2424/EU], the opponent may be required to prove use of its earlier mark. But what exactly constitutes proof of use in such a circumstance? This was the issue before the General Court in case T-638/14 (the judgment is in Spanish and French, the Spanish version is attached), concerning the trade mark dispute between Frinsa del Noroeste SA and Frisa Frigorifico Rio Doce SA with respect to activities in the food business. The Court upheld the appeal filed by the opponent Frinsa and overturned the decision of the Board of Appeal, which had held that Frinsa failed to prove use of its earlier mark.

Frisa Frigorifico Rio Doce SA, the Intervener on appeal before the General Court, had filed an application for registration of the EUTM (ex CTM) mark FRISA in stylized form for various goods in class 29 and related services in class 35.The opponent, Frinsa del Noroeste SA, relied on its registration of the stylized EUTM (ex CTM) mark FRINSA F, which had been registered for goods in class 29 on 31/08/1999.

In the proceeding before the Opposition Division, Frinsa was able to prove use of its mark in respect of only some of the goods in class 29 for which it was registered, namely “tunas, cephalopods, fish, shellfish”. On that basis, the Opposition Division upheld the opposition against all contested goods in class 29 except for “frozen potatoes for French fries, canned beans, canned cooked beans”, which it ruled did not create a likelihood of confusion. It rejected totally the opposition in relation to the services covered by the opposed application.

Both parties filed an appeal from the decision of the Opposition Division. Frinsa argued that “frozen potatoes for French fries, canned beans and canned cooked beans” were all confusingly similar to the goods covered by its earlier registration in class 29. Frisa alleged that the evidence submitted by the opponent as proof of use of its earlier mark was not sufficient to substantiate genuine use of the mark. This evidence consisted of the following:

Two invoices (dated nine months after the relevant period for proof of use);

Advertisements of the FRINSA products in a product review;

Advertisements in two publications of the Spanish newspaper ABC;

The 2012 Urraki Catalogue;

Photographs of the FRINSA products;

The catalogue ELITE GOURMET describing FRINSA products;

The 2012 Guide, including master chefs’ recipes based on FRINSA products (which could be related to the relevant period for proof of use);

The book ‘El mar en conserva’ (which could be related to the relevant period for proof of use);

The reference to the web page www.frinsa.es to additional information on the use of the mark FRINSA F.

In particular, no sales figures or invoices from the relevant period were submitted by the applicant to show the volume of sales for the products sold under the mark. The two sole invoices submitted were not dated within the relevant time frame, 8/12/2006-7/12/2011, and the new evidence submitted on appeal showed no additional, objective and clear information for the purpose of proving use.

The Board of Appeal overturned the decision of the Opposition Division on the ground of the inadequacy of the proof of use submitted by Frinsa for the relevant period. As result, the cumulative requirements of Rule 22(2)(3) EUTMIR were not met in the case at issue, namely the place, time, extent and nature of the use of the opposing mark in connection with the goods for which the mark is registered and on which the opposition is grounded. The Board of Appeal therefore rejected the opposition in its entirety (for all goods and services in classes 29, 35 and 39), thereby accepting the applicant’s appeal while dismissing that of the opponent.

Proceeding before the General Court

At the outset, it is noted that the General Court dismissed the EUIPO’s claim that Frinsa’s appeal was inadmissible, ruling that Frinsa had sought to overturn the Board of Appeal’s decision and not the refusal of registration of the EU application FRISA. On the merits, the General Court stated that the broader scope of protection of marks with substantial reputation does not exempt the trademark owner from the need to substantiate that it has used its mark to maintain or expand market share for the products and services for which the marks are registered. Therefore, whatever the reputation enjoyed by the mark, proof of use must still be made. Interestingly, the Court noted that evidence of use outside of the relevant period need not be disregarded per se. It still can assist in determining the use of the trade mark where taken together with the totality of the evidence submitted.

Moreover, the General Court stated that turnover and sales data are not dispositive when assessing proof of use. They must be analysed in connection with the scope of the business at issue, the manufacturing or commercialization capacity, or the degree of diversification of the business involved, as well as, of course, the nature of the relevant goods and services.

Based on the foregoing, the Court found that the paucity of evidence regarding the sales volume of FRINSA products could be compensated for by the strength of other relevant evidence of use submitted by the Opponent. According to the General Court, the Board of Appeal erred in not considering the evidence regarding advertisements and publications (i.e. the 2012 Guide and the book ‘El mar en conserva’) that had been submitted by Frinsa. Likewise, the Court said that the Board of Appeal had improperly disregarded the evidence that bore dates outside of the above mentioned relevant period which, in fact, confirmed the use of the opponent’s mark FRINSA F.

Practical Relevance of the GC judgment

This judgement suggests that proof of use of an EU trade mark must be assessed on the basis of the interdependence among all the relevant factors, similar to what takes place in assessing the likelihood of confusion. Therefore, the relative lack of sales volume can be compensated for by the frequency and duration of use and vice versa [Merpel adds that, for more details on the principle of interdependence in connection with proof of use, see here]. Although the principle of interdependence is reasonable, still, in the view of this guest blogger, an opponent should try to make sure that at least some of the evidence on turnover and sales figures relates to the relevant period of proof of use of the mark(s) on which it is relying."