General Court on abuse of revocation proceedings based on non-use and belated evidence

Revocation proceedings for non-use provide a playground for several interesting questions. Those proceedings can be abused for various reasons, raising the question if and under which conditions a revocation applicant lacks an interest in bringing proceedings. Further, if the first instance evidence is not deemed sufficient, trade mark owners often supplement their evidence, raising the issue of whether such items may be taken into account at the appeal stage. In two recent decisions, the General Court dealt with both issues (T-1088/23 and T-1089/23).

Background

In 2016, RTL Group Markenverwaltungs GmbH (‘RTL’) obtained registration of the following EU trade mark for a broad range of goods in 22 classes:

In 2021, an individual filed an application for revocation of this trade mark and another 'RTL' trade mark based on non-use.

The background for these revocation applications seem to be that RTL opposed the individual's application of German trade mark no. 302018106649.

The European Union Intellectual Property Office (‘EUIPO’) partially revoked the trade marks after RTL submitted some evidence of use. RTL was not satisfied and appealed to the EUIPO’s Board of Appeal (‘BoA’). The BoA upheld the appeal only to a small extent and dismissed it as to the remainder. It found that RTL had established genuine use for ‘broadcasting of television, radio and electronic media advertising’.

RTL was discontent because it considered to have established genuine use for the broader category ‘advertising, marketing and promotional services’. Further, RTL claimed that its exceptional reputation leads to an enhanced protection which should be taken into account when assessing genuine use for all other goods and services. RTL filed an action with the General Court.

The General Court's Decisions

The Court partially upheld the appeal with respect to ‘advertising, marketing and promotional services’ and dismissed it as to the remainder.

1. Claim for inadmissibility

RTL argued that the applicant abused the revocation proceedings.

The judges recalled that revocation applications may be filed by any natural or legal person and any group that has standing to sue and be sued under the governing law (Article 63(1)(a) EUTMR).

Unlike relative grounds for refusal (which protect the interests of proprietors of earlier rights), absolute grounds for refusal and grounds for revocation aim to protect the public interest underlying them. According to recital 24 EUTMR, EU trade marks are protected only where they are actually used. The judges concluded that the purpose of revocation proceedings based on non-use is to allow the broadest possible range of people to challenge an EU trade mark which has not been put to genuine use for a given period of time without requiring them to demonstrate an interest in bringing proceedings.

Moreover, Art. 63(1)(a) EUTMR does not require the applicant to act in good faith. The revocation of a mark for non-use during a five-year period is a consequence imposed by Art. 58(1)(a) and Art. 64(2) EUTMR. The trade mark owner does not have the right to retain its registration because the revocation applicant engaged in unfair competition.

The only exception where a revocation application may be deemed inadmissible is where it has been filed for abusive or fraudulent purposes. RTL invoked the Sandra Pabst case (IPKat here), in which the Grand Board of Appeal held that it constitutes an abuse of rights if

(1) the applicant is a company that has been established for the sole purpose of filing multiple revocation applications,

(2) in that case, the company filed 37 revocation applications against the same party and 850 in total over a period of two years, and

(3) some of the revocation applications were doomed to fail and were used solely for the purpose of exerting pressure or as a ‘retaliatory measure’ due to the applicant for revocation’s failure to negotiate acquisition of the marks at issue’ and therefore in order to obtain an unfair advantage by forcing the proprietor of those marks to conclude an agreement to transfer them.

These circumstances did not exist in the present case. The applicant was not created for the purposes of filing revocation applications. She only filed two applications against RTL. The applicant’s knowledge of RTL’s use of the trade mark ‘RTL’ in the media sector was deemed irrelevant because the contested trade mark had no connection with the media sector and were, therefore, not doomed to fail. The revocation applications were not filed to put pressure on RTL but rather because the applicant intended to use the mark herself.

2. Rejection of observations

RTL also complained that the BoA rejected to take evidence into account, which RTL submitted for the first time before the BoA after the four months deadline to file the grounds of appeal.

The Court recalled that Art. 95(2) EUTMR and Art. 27(4) EUTMDR allow the BoA to consider facts and evidence filed after the expiry of a deadline. The BoA has wide discretion to decide (while giving reasons for its decision) whether or not to take that evidence into account.

The judges found that the BoA did not render an objective and reasoned decision to exercise its discretion. The BoA only argued that RTL’s observations were filed out of time without assessing whether the conditions of Art. 27(4) EUTMDR were fulfilled.

The EUIPO contended that the BoA only has discretion to consider evidence filed for the first time before the BoA if it has been filed within the time limits for

(a) the grounds of appeal (Art. 22 EUTMDR),

(b) a response to those grounds (Art. 24 EUTMDR) or

(c) authorized replies and rejoinders (Art. 26 EUTMDR).

The judges dismissed this argument as it was not supported by the wording of Art. 95(2) EUTMR or Art. 27(4) EUTMDR.

3. Genuine use

After going through all the evidence submitted by RTL, the Court held that genuine use had been established for ‘advertising, marketing and promotional services’ and not just for ‘broadcasting of television, radio and electronic media advertising’. The companies of the RTL group offered various services that fell under the scope of the former broader term.

As regards the other goods and services of the contested trade mark, for which RTL did not provide sufficient evidence of use, RTL claimed that the sign’s reputation as a ‘media mark’ should lead to a finding of genuine use.

The judges held that such an argument is not only contrary to the wording of the provisions on genuine use but also not in line with their purpose. Trade mark rights may only be exercised if they have been used. Otherwise, unused marks would obstruct competition since competitors may not register and use identical or similar signs for identical or similar goods or services. The Court also referred to the case law of the Court of Justice of the EU, which held that the provisions on trade marks with a reputation and those on genuine use must be interpreted independent of each other (in particular Leno Merken at para. 53).

Comment

The decision sets a high bar for a finding that revocation proceedings based on non-use are abusive. The Sandra Pabst case concerned exceptional circumstances, which are likely to be fulfilled only where someone makes a business out of filing revocation applications and tries to extort money from trade mark owners.