Judgement of the General Court, 8 April 2016. Case T-638/14 Frinsa del Noroeste, S.A. vs European Union Intellectual Property Office (EUIPO).

Genuine use of a previous trade mark, submission of new facts and evidence.  Article 42(2) of Regulation (EC) Nº 207/2009: “If the applicant so requests, the proprietor of an earlier Community trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, 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 opposition, or that there are proper reasons for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier Community trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.”

Frisa Frigorífico Rio Doce S.A. filed an application for registration of a Community trade mark, for the following figurative sign in black and white:

The goods, for which registration was sought, relevant to the judgement, correspond to wholesale and retail store services, food export services and packaging and warehousing services of processed and unprocessed food (covered under Classes 29, 35 and 39 of the Nice Classification).

Frinsa del Noroeste, S.A. filed a notice of opposition against that application to register the requested trade mark, based on the following earlier figurative trade mark of the Union for Classes 29, 35 and 39 of Nice:

The Opposition Division partially upheld the opposition and rejected the application for registration, on the grounds that there was a likelihood of confusion between the trade mark applied for and the earlier trade mark.  Frinsa del Noroeste, S.A. filed an appeal before EUIPO, which was dismissed.  Consequently, a further appeal was made to the General Court against this judgement.

The Judgement of the General Court upheld the appeal in its entirety, annulling the decision of the Board of Appeal of EUIPO, for the following reasons:

Submission of new facts and evidence.  Frinsa del Noreste, S.A. claimed genuine use of the earlier trade mark, but also tried to maintain that, as demonstrated in the procedure before EUIPO, as the mentioned trade mark enjoyed great notoriety or reputation in Spain, there was no need to submit multiple proof of this use.  The General Court rejected these claims, based on the notoriety and reputation that, in its view, the earlier trade mark enjoyed in Spain. It was their responsibility in proceedings before EUIPO to submit proof of the genuine use of the earlier trade mark, as required by Article 42(2) of Regulation Nº 207/2009 and rule 22(2) and (4) of Regulation Nº 2868/95.

As regards whether an earlier trade mark has been put to genuine use, the General Court pointed out that, as per case-law, the affixing of a trade mark on a regular publication, magazine, newspaper or a catalogue may, in principle, constitute a ‘valid use of the sign’, as a trade mark, for the goods and services concerned, if the content of these publications confirm the use of the sign for the goods and designated by the mentioned trade mark.

Advertising can, therefore, be valid evidence that, on specific occasions, the earlier trade mark was used publicly and outwardly, in part of the territory of the European Union, to designate some of the products for which it had been registered, and for this reason resolved that the Board of Appeal had incorrectly refused to recognise this asset.

Based on the above, the General Court considered the plea regarding infringement of Article 42(2) of Regulation Nº 207/2009 and rule 22(2) of Regulation Nº 2868/95 and, therefore, the application for annulment, and consequently annuls the contested decision inasmuch as this is based on the fact that the earlier trade mark was not put to genuine use for the contested goods.