In case the mark on which EU opposition is based is registered for over five years, the owner of the contested trademark can ask the opponent to demonstrate, in accordance with Article 47, paragraphs 2 and 3 of EUTM Regulation No. 2017/1001, that there has been genuine use of the earlier mark within the territory of reference, during the five years preceding the date of filing or the date of priority of the contested EU trademark application.
The earlier mark must have been put to genuine use in order to be enforceable against an European Union trademark application. It cannot be considered sufficient for this purpose, a use made for the sole purpose of preserving the rights conferred by the mark.
Over the years, the EU jurisprudence has stated several times about the appropriate proofs to demonstrate the use of the mark.
According to the judgment of the Court of First Instance VITAFRUIT July 8, 2004, T-203/02, para-graphs 21 and 41,
“as to the extent of the use to which the earlier mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use”.
“the turnover and the amount of sales of products under the earlier mark cannot be as-sessed in absolute terms, but must be related to the other relevant factors, such as the volume of activity, ability to commercial production or marketing or the degree of diversification of the undertaking using the trademark and the characteristic of the products or services on the relevant market.
Therefore, it is not necessary that the use of the earlier mark is always quantitatively important to be deemed genuine. Even minimal use can be considered sufficient to be deemed genuine as warranted, in the economic sector concerned, to maintain or create market share for the goods or services protected by the mark”.
The EU Court of First Instance, in addition, in the judgment 4/07/2014 (case T-345/13), has recent-ly had occasion to rule on the suitability of the proof of use in the construction services made with invoices to suppliers.
The opposing party, who was called to demonstrate the use of its mark in the field of construction services in class 37, had produced a series of invoices demonstrating the purchase of goods or services associated with the construction, then invoices not issued to consumers but to suppliers. The Court of First Instance has confirmed as established by both the OHIM Opposition Division and the Board of Appeal, which considered such documents unsuitable to demonstrate the use of the mark for claimed services. Said documents were suitable to demonstrate the relationship with the suppliers but not sufficient for the public demonstration of the use of the mark.
In this regard, it must be emphasized the importance that the mark is used publicly and outwardly.
Also Italian Patent and Trademark Office on October 27 2014 (regarding the opposition n. 32/2012) took a position on the assessment of the proof of genuine use of a Community trademark (now EU trademark), in the event that such evidence does not refer to the Italian market.
In this matter, the opposed party (hereinafter, the applicant) asked the proofs of use of the Community trademarks placed by the opponent as basis for the opposition.
The applicant had also objected that, regardless effectiveness, the evidence had covered only Spain and France.
In this regard the Italian Patent and Trademark Office states that:
“The opposition recently introduced in our system is a special, administrative proceeding … with its own specificities, but observing the principles of Community trademarks and the principles of interpretation of the Court of Justice”.
More specifically, the reference is to the unitary character of the Community trademarks, which produce the same effects through the Community and
“which are therefore enforceable against any subsequent trademark application detrimental to their protection, even with regard to consumer’s perception of a part of Community territory”.
The opinion of the Italian Patent and Trademark Office regarding the proof of use (in case such use is not demonstrable in Italy but is demonstrable in other EU Countries) is that
“if a proof of use should not be accepted a priori, on the basis of no relevance to the Italian territory, the owner of a Community trademark, which is unitary and equally protectable in any Member State of the Union, could not exercise it in our Country with success, when it wants to invoke its right in an opposition against a national trademark … In that case, an unacceptable situation of discrimination and inequality with the other owners of Community trademarks would arise, in clear violation of the obligations assumed by our Country with the adhesion to the Union and the principles of its legal system”
The Examiner continues by saying that
“If the solution of the issue of proof of use depended on the judicial system of each member State, it may result, for trademark owners, a protection variable according to the law which would be time to time applicable, so that the purpose of the same protection under the judicial systems of all Member States would not be achieved”