How to justify decisions while rejecting evidence: a further comment

Earlier this year the jiplp weblog posted a Current Intelligence note, "How to justify decisions while rejecting evidence" by Tomasz Rychlicki (Patent and Trade Mark Attorney, Poland, and a long-standing member of the JIPLP Editorial Board). This blog has now received a response from two Polish practitioners, Jakub Mrozowski and Michał Siciarek, both of LDS Lazewski Depo & Partners, Warsaw.  

This blog is pleased to reproduce Jakub and Michal's response in full below, and thanks them for taking the trouble to supply this most instructive comment. This is what they write:

With reference to this note from Tomasz Rychlicki posted via JIPLP blog and the corresponding discussion on the JIPLP Readers and Writers LinkedIn Group regarding the decision of the General Court in Case T-235/12, CEDC International sp. z o.o. v OHIM (Shape of a blade of grass in a bottle), as insiders to this case, we would like to provide a short commentary on the interesting points not covered in the note.

The decision in this case touched upon three important issues. As Tomasz rightly noted, to a large extent the case concerns the issue of the admissibility of evidence not filed within the initial deadline (filed together with the appeal to the OHIM’s Board of Appeals) and the issue of proper justification of OHIM’s decision when excersing its discretionary power to either allow or deny belated evidence. However, this decision represents also an important point in the discussion on genuine use of several trade marks on the same product, in particular with regard to 3D trade marks.

Procedural issues

As some readers may recall, there was a time when the General Court used to consider all sorts of evidence submitted together with the appeal to the Board of Appeal as being submitted in due time (due time = in time to file the appeal). Since, however, OHIM did not greatly appreciate this practice, it appealed one of the decisions of the General Court and so this liberal era has ended with a Solomonic judgment delivered by the Grand Chamber of the Court of Justice in Case C‑29/05 P Kaul. The Court of Justice of the European Union (CJEU) wisely considered the arguments of both sides and said that OHIM may accept or reject belated evidence, but that it needs to present a justification of its decision to do so and that certain situations or factual elements may favour taking belated evidence into account.

From that time onwards, the case-law has been a bit shaky, but seems to be settling down again to a fairly liberal approach. The decision in Case T-235/12 provides a thorough overview of the recent case-law in this respect and also analyses a number of arguments of the parties relating to situations in which the belated evidence should or should not be accepted. We will thus not go into more detail in this respect, but rather encourage anyone struggling with the belated evidence issue to take a look at the judgment.

Genuine use of 3D trade marks

However, we would like to bring the readers attention to essential issue underlying the decision and in the proceedings before the OHIM, which is that of the proper standard of assessment of genuine use of the 3D trade marks. 

The case concerned the opposition against a CTM application for a 3D trade mark based on earlier 3D trade marks, each representing a simple bottle with a single blade of grass inserted inside:

 Above: one of the earlier national trade
marks (left); the contested 3D mark (right)

These trade marks were all registered without labels, but were only used on the market with labels with various word and graphical trade marks on them. As proof of use request was filed, OHIM had to analyse the issue of genuine use of earlier 3D trade marks. During the opposition proceedings the opponent presented numerous items of evidence, but only with visuals of the product in front view where blade of grass is visible behind the label:

Examples of genuine use presented before
OHIM's Opposition Division

The Opposition Division found that the evidence provided was insufficient to establish genuine use of the earlier 3D mark and that the presence of a label containing the term ‘żubrówka’ and the representation of a bison on the bottle marketed altered the distinctive character of that mark in the form in which it was registered. On appeal to OHIM’s Board of Appeal the opponent supplemented the evidence with visuals of the product from both sides and from the back, including affidavits:

Visuals presented together with the appeal to OHIM's Board of Appeal 

The Board of Appeal still however found that the opponent did not prove genuine use (and more specifically, the nature of use) of the earlier 3D trade marks, basing its opinion on the analysis of images of the trade marks in views from front only and finding that the label had overshadowed the blade of grass placed inside the bottle. OHIM did not take into account new items of evidence submitted together with an appeal presenting views of the product from various sides (where the label did not cover the blade of grass) and OHIM failed to present any reasoning in this respect.

One of the arguments relied upon in the application for annulment was that three-dimensional trade marks may be perceived by consumers from various sides, including sides where the blade of grass is clearly visible and label does not cover it in any way. All in all, the nature of 3D trademarks requires the analysis of the proof of use perceived from various sides, while the OHIM its analysis to the front view only, which is characteristic for figurative trademarks. The Court agreed with this argument and presented its opinion in various paragraphs, in particular:

[64] First, Mr K.’s statement and the appended presentations of the bottle, seen from the front, two opposite sides and the back, were, prima facie, likely to be truly relevant to the outcome of the opposition brought before OHIM since, had they been taken into account, they would have been likely to call into question the Board of Appeal’s assessment ...:  first, that ‘the diagonal line was not affixed to the outside surface and did not appear on the label itself’; second, that ‘as a result of the presence of the label, it was impossible to see what was behind it on or in the bottles’; and, third, that ‘in those circumstances, the applicant had not proven the nature of use of its earlier three-dimensional French mark’.

[65] It is important to note in that regard that the three-dimensional nature of a mark such as that at issue precludes a static, two-dimensional vision and calls for a dynamic, three-dimensional perception. Thus, a three-dimensional mark may, in principle, be perceived from a number of sides by the relevant consumer. As regards proof of use of such a mark, it must therefore be taken into account not as a reproduction of how it is viewed in two dimensions, but rather as a presentation of how it is perceived in three dimensions by the relevant consumer. It follows that presentations from the side and the back of a three-dimensional mark are, as a rule, likely to be truly relevant for the purposes of assessing the genuine use of that mark and cannot be rejected solely on the ground that they are not reproductions from the front.

All in all, the decision in Case T-235/12 gives the holders of 3D trade marks yet another argument in favour of the possibility of joint use of several trade marks at the same time which is still considered genuine. And this fits well in the discussion on genuine use of several trade marks, present in decisions such as Cases T-29/04 (CRISTAL), C-553/11 (PROTI), C-12/12 (LEVI) or C-252/12 (SPECSAVERS).

And recently, paragraph 65 of the decision in Case T-235/12 found its way to the Court of Justice Annual Report for 2014 (among few other cases from the IP field). The quote can be found in the CJEU Annual Report on page 146.

We look forward to readers’ comments and examples of other cases touching upon this very interesting area.