‘Whole whole whole’ - T-358/21 – Assessment of the food industry’s genuine use evidence

Excuse this Kat for not having resisted using a pun in this post title – wishing all of you happy Holidays and a healthy New Year!

This post discusses a case decided by the EU General Court earlier this month regarding the genuine use of a trade mark (T-358/21). Once more, this case stresses the importance of the ‘as a whole’ approach. 

Background 

ALTUNIS – TRADING (‘ALTUNIS’) is the proprietor of the contested EUTM below (No 683250; Classes 29 and 30), which was filed on 21 November 1997 and registered on 9 January 2002). 

On 24 January 2019, Hotel Cipriani S.P.A (‘Hotel Cipriani’) filed a revocation request against all of the goods designated to the contested EUTM, invoking Article 58(1)(a) EUTMR. 

Carrying the burden of proof, ALTUNIS submitted that at least part of the goods (marked in bold red), which had been put into genuine use, should be retained: 

• 29 Meat, fish, poultry and game; meat extracts; dried fruits and vegetables; eggs; milk; edible oils and fats. 
• 30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread; honey, treacle; yeast, baking-powder; salt; vinegar; spices; ice. 

In response, Hotel Cipriani commented on each of the individual evidence pieces and submitted that the contested EUTM should be cancelled entirely for not providing the evidence-wise ‘all-in-each coverage’. In other words, it was submitted that ALTUNIS failed to indicate each piece’s genuine use regarding aspects concerning ‘time, place, extent, nature and on the designated goods’ (as stipulated in Article 10(3) EUTMDR). 

The Cancellation Division of the EUIPO disagreed with the ‘item-by-item’ arguments and pointed out the comprehensive assessment approach: 

In order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case. That assessment implies a certain interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be compensated for by high intensity of use or a certain constancy regarding the time of use of that trade mark or vice versa (08/07/2004, T 334/01, Hipoviton, EU:T:2004:223, § 36).

Therefore, the Cancellation Division of the EUIPO acknowledged the valid goods that were of sufficient evidence regarding the genuine uses (marked in bold green) while revoking the rest due to insufficient evidence: 

• 29 Meat, fish, poultry and game; meat extracts; dried fruits and vegetables; eggs; milk; edible oils and fats. 
• 30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread; honey, treacle; yeast, baking-powder; salt; vinegar; spices; ice. 

The Cancellation Division’s decision (No 32103) is accessible here, against which, on 31 July 2020, Hotel Cipriani appealed to the Fourth Board of Appeal of the EUIPO (‘BoA’). 

The BoA also disagreed with the said ‘item-by-item and all-in-each coverage’ approaches and reiterated the interdependent, interrelated and comprehensive assessments: 

22 It is not required that each item of evidence contains information about all four elements to which proof of genuine use must relate, namely place, time, nature and extent of use. Thus, items of evidence taken together may establish the necessary facts, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (16/11/2011, T-308/06, Buffalo Milke, EU:T:2011:675, § 61; 24/05/2012, T-152/11, Mad, EU:T:2012:263, § 33, 34). 

After the appeal being dismissed by the BoA, Hotel Cipriani turned to seek the annulment of the BoA’s decision (‘contested decision’, Case R 1599/2020-4, accessible here) and the revocation of the contested mark at the General Court. 

On the assessment of genuine use, the Court once again noted the interrelated approach and provided further explanations: 

In the assessment of the evidence of the genuine use of a mark, each piece of evidence is not to be analysed separately, but rather together, in order to determine the most likely and coherent meaning. Thus, even if the probative value of an item of evidence is limited to the extent that, individually, it does not show with certainty whether, and how, the goods concerned were placed on the market, and that item of evidence is therefore not in itself decisive, it may nevertheless be taken into account in the overall assessment as to whether the use of the mark concerned is genuine. That is also the case, for example, when that item of evidence is accompanied by other evidence (see, to that effect, judgments of 9 December 2014, Inter-Union Technohandel v OHIM – Gumersport Mediterranea de Distribuciones (PROFLEX), T 278/12, EU:T:2014:1045, paragraphs 64 to 69, and of 7 September 2016, Victor International v EUIPO – Ovejero Jiménez and Becerra Guibert (VICTOR), T 204/14, not published, EU:T:2016:448, paragraph 74).

Another interesting plea, which was also rejected by the Court, concerned the classification of goods. Hotel Cipriani submitted that the BoA had erred in finding that evidence regarding the use of panettone and focaccia could contribute to establishing the genuine use for the rather general category of ‘preparations made from cereals’. The plea pointed out that panettone and focaccia could, at most, contribute to the ‘bread’ part, but not jointly for the said general category. 

To that, the Court noted that what matters in determining the scope of a trade mark’s protection is the usual meaning of the term, not the taxonomic information structure: 

... the classification of goods and services under the Nice Agreement is itself carried out only for exclusively administrative purposes. The scope of protection under trade mark law is therefore not determined by a term’s inclusion in a taxonomic information structure but by the usual meaning of that term. The purpose of the Nice Classification is only to facilitate the drafting and processing of trade mark applications by suggesting certain classes and categories of goods and services. By contrast, the headings of the classes do not constitute a system in which goods or services included in one class or category are precluded from also forming part of another class or category (see, to that effect, judgment of 19 April 2018, Rintisch v EUIPO – Compagnie laitière européenne (PROTICURD), T-25/17, not published, EU:T:2018:195, paragraph 70 and the case-law cited).

Therefore, panettone and focaccia could be classified as ‘preparations made from cereals’ as well as ‘bread’, in Class 30. 

Comments 

Proving a trade mark’s genuine use possibly involves hard labour and strategic tasks, which might need to be further tailed per specific industries, markets, goods and trade mark proprietors’ circumstances. Following that, the line between genuine and mere token use may go back or forth according to different degrees of evidence chains. This case, together with the clear reasoning provided by the EUIPO and the General Court, are helpful references for comparable situations.