Citation: Journal of Intellectual Property Law & Practice 2009 4(11):779-781; doi:10.1093/jiplp/jpp147
Harwin International LLC v Office for Harmonisation in the Internal Market, Cuadrado, SA (Case T-450/07 Court of First Instance of the European Communities, 12 June 2009)
The Court of First Instance of the European Communities (CFI) ruled that the applicant's written objections to documents put forward voluntarily by the proprietor of earlier trade marks in respect of its use of such marks in the course of cancellation proceedings constituted a formal request on the part of the applicant that the proprietor furnish proof of use of its earlier marks.
Legal context
In Community trade mark cancellation proceedings, Article 56(2) and (3) of Regulation 40/94 (now Article 57(2) and (3) of Regulation 207/2009) provides:
Facts
Harwin applied to register a figurative mark featuring the word PICKWICK for ‘clothing, footwear, headgear’ (Class 25). The Community trade mark reached registration in September 2000. However, in January 2005, Cuadrado applied to cancel Harwin's mark on the grounds of invalidity under Article 55 of Regulation 40/94. The cancellation application was based on two earlier marks belonging to Cuadrado: the word mark PICK OUIC Cuadrado, S.A. VALENCIA, filed on 24 April 1989 in Class 25, and a figurative mark also featuring the words PICK OUIC and also in respect of Class 25 filed on 2 April 1997.
In its application for a declaration of invalidity, Cuadrado included, of its own accord, certain documentary evidence in respect of the use of its earlier trade marks. In its observations in response, Harwin stated that the evidence so provided was inadequate to prove genuine use. Cuadrado responded by supplying additional documents on proof of use.
The Cancellation Division agreed with Cuadrado and duly granted the application for a declaration of invalidity. Harwin appealed to the Board of Appeal, requesting among other things that the Cancellation Division's decision be annulled on the grounds that it had not assessed whether Cuadrado had adequately proved genuine use of its earlier marks. In this respect, Harwin pointed out that the Board of Appeal had already judged that those documents were insufficient to establish genuine use of the PICK OUIC Cuadrado, S.A. VALENCIA mark when it considered the point in opposition proceedings running parallel to the cancellation proceedings.
The Board of Appeal dismissed the appeal, stating that the Cancellation Division had correctly decided that it was not entitled to look at the issue of proof of use of the earlier marks as Harwin had not made an express request that Cuadrado prove use of its earlier marks as required by Article 56(2) and (3) of Regulation 40/94 (now Article 57(2) and (3) of Regulation 207/2009).
Harwin appealed to the Court of First Instance.
Analysis
OHIM argued that, as had been stated in MUNDICOR, a request to furnish proof of use must be made expressly so that the burden of proving use shifts to the proprietor of the earlier marks. It is that request which confers on OHIM the competence to adjudicate whether genuine use has been proved. In the absence of such request, OHIM argued, it must be assumed that the mark is in genuine use and there is no need to examine the issue.
Because Harwin had not made an express request for proof of use when it submitted its observations, Harwin was, in OHIM's view, not allowed to dispute the genuine use of the earlier marks. In other words, since the objections raised by Harwin in its observations did not constitute an express request, the Cancellation Division and the Board of Appeal could not examine the evidence submitted and were correct in going straight to the question of the likelihood of confusion in respect of the marks in question.
The CFI disagreed and decided that Harwin had ‘expressly and timeously’ requested proof of use (as required by case law) when it stated in its observations that the documents provided by Cuadrado in respect of genuine use of its earlier marks were inadequate. The Court noted that, on a literal interpretation of Article 56(2) and (3), the words ‘so requests’ could be understood as referring to the kind of ‘request’ made by Harwin in its observations when it disputed Cuadrado's evidence. Furthermore, Cuadrado had clearly understood Harwin's request as it duly provided additional evidence in response.
The CFI differentiated this case from the facts in MUNDICOR, in which OHIM's arguments were upheld and it was decided that no request to furnish proof of use had been made as the documents voluntarily submitted by the proprietor were submitted as evidence of reputation, not as evidence of genuine use. In MUNDICOR there was therefore no understanding between the parties that the issue for which evidence was being provided was the issue of genuine use. In this case, however, the CFI remarked that there was a clear exchange between the parties specifically in relation to the question of genuine use.
In the CFI's view, the underlying principles are that:
Practical significance
It is clearly better for the applicant whose mark is being challenged, whether in opposition proceedings or cancellation proceedings, to state expressly and specifically in its observations in response that it requires the opponent and proprietor of the earlier mark to furnish proof of genuine use. However, where it is obvious that both parties are addressing the point through the production of documents and argument, the Court will accept that the request has been made. This decision turned very much on the particular facts, however, and does not necessarily mean that there is any less need for the applicant party to make it clear what he is requesting.
Harwin International LLC v Office for Harmonisation in the Internal Market, Cuadrado, SA (Case T-450/07 Court of First Instance of the European Communities, 12 June 2009)
The Court of First Instance of the European Communities (CFI) ruled that the applicant's written objections to documents put forward voluntarily by the proprietor of earlier trade marks in respect of its use of such marks in the course of cancellation proceedings constituted a formal request on the part of the applicant that the proprietor furnish proof of use of its earlier marks.
Legal context
In Community trade mark cancellation proceedings, Article 56(2) and (3) of Regulation 40/94 (now Article 57(2) and (3) of Regulation 207/2009) provides:
If the proprietor of the Community trade mark so requests, the proprietor of an earlier Community trade mark, being a party to the invalidity proceedings, shall furnish proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his application. ...According to European Communities case law, such a request must be made ‘expressly and timeously to OHIM’ (Case T-183/02 and T-184/02 El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de Espaa (MUNDICOR) [2004] ECR II-965). The question in this case was whether the proprietor of the prior Community trade mark in question had indeed made a formal request in accordance with the provisions.
Facts
Harwin applied to register a figurative mark featuring the word PICKWICK for ‘clothing, footwear, headgear’ (Class 25). The Community trade mark reached registration in September 2000. However, in January 2005, Cuadrado applied to cancel Harwin's mark on the grounds of invalidity under Article 55 of Regulation 40/94. The cancellation application was based on two earlier marks belonging to Cuadrado: the word mark PICK OUIC Cuadrado, S.A. VALENCIA, filed on 24 April 1989 in Class 25, and a figurative mark also featuring the words PICK OUIC and also in respect of Class 25 filed on 2 April 1997.
In its application for a declaration of invalidity, Cuadrado included, of its own accord, certain documentary evidence in respect of the use of its earlier trade marks. In its observations in response, Harwin stated that the evidence so provided was inadequate to prove genuine use. Cuadrado responded by supplying additional documents on proof of use.The Cancellation Division agreed with Cuadrado and duly granted the application for a declaration of invalidity. Harwin appealed to the Board of Appeal, requesting among other things that the Cancellation Division's decision be annulled on the grounds that it had not assessed whether Cuadrado had adequately proved genuine use of its earlier marks. In this respect, Harwin pointed out that the Board of Appeal had already judged that those documents were insufficient to establish genuine use of the PICK OUIC Cuadrado, S.A. VALENCIA mark when it considered the point in opposition proceedings running parallel to the cancellation proceedings.
The Board of Appeal dismissed the appeal, stating that the Cancellation Division had correctly decided that it was not entitled to look at the issue of proof of use of the earlier marks as Harwin had not made an express request that Cuadrado prove use of its earlier marks as required by Article 56(2) and (3) of Regulation 40/94 (now Article 57(2) and (3) of Regulation 207/2009).
Harwin appealed to the Court of First Instance.
Analysis
OHIM argued that, as had been stated in MUNDICOR, a request to furnish proof of use must be made expressly so that the burden of proving use shifts to the proprietor of the earlier marks. It is that request which confers on OHIM the competence to adjudicate whether genuine use has been proved. In the absence of such request, OHIM argued, it must be assumed that the mark is in genuine use and there is no need to examine the issue.
Because Harwin had not made an express request for proof of use when it submitted its observations, Harwin was, in OHIM's view, not allowed to dispute the genuine use of the earlier marks. In other words, since the objections raised by Harwin in its observations did not constitute an express request, the Cancellation Division and the Board of Appeal could not examine the evidence submitted and were correct in going straight to the question of the likelihood of confusion in respect of the marks in question.
The CFI disagreed and decided that Harwin had ‘expressly and timeously’ requested proof of use (as required by case law) when it stated in its observations that the documents provided by Cuadrado in respect of genuine use of its earlier marks were inadequate. The Court noted that, on a literal interpretation of Article 56(2) and (3), the words ‘so requests’ could be understood as referring to the kind of ‘request’ made by Harwin in its observations when it disputed Cuadrado's evidence. Furthermore, Cuadrado had clearly understood Harwin's request as it duly provided additional evidence in response.
The CFI differentiated this case from the facts in MUNDICOR, in which OHIM's arguments were upheld and it was decided that no request to furnish proof of use had been made as the documents voluntarily submitted by the proprietor were submitted as evidence of reputation, not as evidence of genuine use. In MUNDICOR there was therefore no understanding between the parties that the issue for which evidence was being provided was the issue of genuine use. In this case, however, the CFI remarked that there was a clear exchange between the parties specifically in relation to the question of genuine use.
In the CFI's view, the underlying principles are that:
* the proprietor or an earlier trade mark is obliged to prove the use of its mark only if that use is challenged by the proprietor of the trade mark which is the subject-matter of an application for a declaration of invalidity;Where there is such a challenge of the use, whether by means of a request for proof of use submitted by the proprietor of the trade mark which is the subject-matter of an application for a declaration of invalidity or by means of that party challenging the evidence submitted by the proprietor of the earlier mark to prove use, OHIM is required to examine the issue of proof of use prior to that of the existence of a likelihood of confusion.
* In the absence of such a challenge, OHIM may confine itself to considering whether a likelihood of confusion exists, without considering proof of use.
Practical significance
It is clearly better for the applicant whose mark is being challenged, whether in opposition proceedings or cancellation proceedings, to state expressly and specifically in its observations in response that it requires the opponent and proprietor of the earlier mark to furnish proof of genuine use. However, where it is obvious that both parties are addressing the point through the production of documents and argument, the Court will accept that the request has been made. This decision turned very much on the particular facts, however, and does not necessarily mean that there is any less need for the applicant party to make it clear what he is requesting.
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