Revocation of “ICE” EUTM: thousands of pages of evidence do not necessarily establish genuine use

Proving genuine use of a trade mark is not necessarily an easy task. It is essential to exercise a certain degree of rigour when selecting evidence. On this very topic, this Kat has found a recent decision issued by the Board of Appeal (BOA) concerning the EUTM “ICE” belonging to Gilmar S.P.A., an Italian Group best known for its fashion brand ICEBERG.

"ICE" EUTM

Facts

On 6 June 2012, GILMAR S.P.A. filed an application for registration of the EUTM n° 10 941 615 “ICE” designating various goods in classes 18 and 25, namely “bags; backpacks; wallets; vanity cases; all the aforementioned goods made of imitations of leather” and “clothing, footwear, headgear”. Registration was completed on 13 June 2017. On 17 August 2022, Drifa ehf. filed an application for revocation due to non-use based on Article 58(1)(a) EUTMR. By a decision dated 8 December 2023, the Cancellation Division dismissed the application for revocation in part. The case was then referred to the Board of Appeal.

Ice cubes and a Kat

Analysis 

In order to rule on the revocation due to non-use of the EUTM ICE, the BOA initially recalled the relevant legislative framework and case law. Indeed, the BOA noted that “pursuant to Article 58(1)(a) EUTMR, the rights of the proprietor of an EUTM shall be declared revoked on application (…) if, within a continuous five-year period preceding the filing date of the application for a declaration of revocation, the trade mark has not been put to genuine use in the EU in connection with the goods or services in respect of which it is registered”. It also added that, under Article 10(3) and (4) of the EUTMDR, “the indications and evidence for furnishing of proof of use shall consist of indications concerning the place, time, extent and nature of use of the contested EUTM for the goods and services in respect of which it is registered. The evidence shall, in principle, be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspapers, advertisements, and statements in writing as referred to in Article 97(1)(f) EUTMR”.

The BOA further noted that “the EUTM proprietor has first to allege the relevant facts, secondly to give sufficient evidence for its allegations, and thirdly to clearly link each allegation with the relevant particular piece of evidence”. In other words, the burden of proof lies solely with the EUTM holder. It is worth underlining that the assessment of the genuine use of the EUTM is a global one. It should take into account all the relevant factors of the case, as understood in T-334/01, Hipoviton.

In the present case, the Board observed that the five-year period for which Gilmar was required to demonstrate genuine use began on 17 August 2017, the date on which the application for revocation was filed, and ended on 16 August 2022.

The BOA carried on its analysis by assessing the evidence (i.e., invoices, screenshots, catalogues, affidavit) of genuine use communicated by Gilmar, which amounts to roughly 2,000 pages. In light of the photographic evidence and the affidavit provided by Gilmar, the Board concluded that the EUTM holder had engaged in the sale of clothing and accessories to retailers in Italy during the aforementioned period.

Nevertheless, the BOA observed that it was challenging to ascertain the specific products associated with the provided invoices. Indeed, in some invoices, the date and product code were absent. In others, the product codes that were communicated did not appear there. Similarly, as regards catalogues, the BOA held that while they “contain product codes, the Board cannot recall that any of these product codes appear on the invoices”.

As result the BOA underlined on multiple times that Gilmar failed at linking the evidence to the invoices. On this point, the BOA held that it must be recalled that “it would have been the obligation of the EUTM proprietor to link this evidence with the invoices”.

Before reaching a conclusion, the BOA addressed whether the sign “ICE” concerned use of the EUTM as registered. Relying explicitly on Article 18(1)(a) EUTMR, the BOA recalled that “genuine use of a trade mark also includes use of the sign in a form differing in elements which do not alter the distinctive character of that trade mark in the form in which it was registered, regardless of whether or not the sign in the form as used is also registered in the name of the proprietor”. The BOA also added that “a finding of alteration of the distinctive character of the sign as registered requires a case-by-case examination of the distinctive and dominant character of the elements added, omitted or altered, based on the intrinsic qualities of each of those elements and on the relative position of the various elements in the configuration of the sign”, as understood in T-78/19, Lidl.

The Board was able to ascertain that the term “ICE” possessed an average inherent distinctive character in relation to the goods in Classes 18 and 25.

The BOA limited its analysis to 15 instances of the sign, for which a correlation could be discerned between the signs and the associated invoices. In this regard, the BOA correctly held that, for uses 1 to 4, the sign "ICE" is visually dominant and retains its independent role, thus warranting its classification as a use of the contested EUTM. Such was not the case for uses 11 to 14, where the sign “ICE” no longer retains a dominant or independent role. The distinctive character of the EUTM is therefore altered. Ultimately, the Board observed that only uses 1, 2, 3, and 4 could be taken into account in evaluating the significance of the TMU's usage. Nevertheless, the corresponding sales figure was insufficient to constitute a serious use of the contested EUTM.

Finally, despite a careful analysis of the evidence submitted by Gilmar, the BOA was unable to find that any of the evidence established genuine use of the ‘ICE’ trade mark. It therefore logically upheld Drifa ehf.'s application for revocation.

Thoughts

While the decision does not introduce any new legal standards, it offers insights that can be drawn by those interested in understanding what evidence is ‘good’ evidence. Firstly, it falls upon the EUTM holder to demonstrate the legitimacy of the contested genuine use. It is important to note that the BOA’s assessment is based solely on the evidence presented. The Board itself will not intend to establish connections between the various pieces of evidence. It is therefore imperative that the selection of evidence is not overlooked. The nature of the evidence may vary, although there are certain constants (e.g., invoices, catalogues). It is of the utmost importance that the evidence should be concrete, objective and, above all, enable a clear link to be established with the allegations. It is unwise to submit more than 2,000 pages of evidence if they fail at proving the existence of the required link.