When Brownies trademarks are really used?

When it comes to protection of trademarks, the law requires these trademarks to be genuine used within 5 years after their registration. If this doesn’t happen or the use is ceased for 5 consecutive years one registered trademark can be revoked.

This is used often in opposition procedures by trademark applicants who ask the opposition applicant to prove trademark use for a period of 5 years. If there is no evidence for such use, oppositions are dismissed.

The General Court has ruled in case T‑598/18 that concerns such a situation. The case background is as follow:

On 30 April 2015, Mr Juan Morera Morral filed an application for registration of an EU trade mark for BROWNIE in classes 18, 25 and 35.

Against this application an opposition was filed by The Guide Association based on earlier marks for BROWNIES and BROWNIE for similar goods and services.

On 26 August 2016, the applicant requested that the intervener furnish proof that the earlier trade mark had been put to genuine use.

On 18 January 2017, the intervener produced several documents, consisting of an affirmed statement by its Corporate Resources Director (‘the affirmed statement’) and five annexes, as proof of genuine use of the earlier mark (‘the second series of documents’). One of the marks was used in this graphic representation:

On 23 October 2017, the Opposition Division partially upheld the opposition. In particular, it considered that the intervener had furnished proof of genuine use of the earlier trade mark for the goods and services such as ‘Key rings’; ‘Rucksacks; daysacks; bags for children’; ‘Articles of clothing, all for girls’; ‘Badges; emblems; ribbons; embroidery; patrol names, shoulder patches, all in the nature of embroidery; woggles’; ‘Organisation of group activities in the education, cultural, training and entertainment fields; provision of courses of instruction and training in camping, sports, homemaking, wood-craft’.

In addition, it found that there was a likelihood of confusion between the marks at issue.

On 18 December 2017, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.

By decision of 4 July 2018 the Second Board of Appeal of EUIPO dismissed the appeal. In particular, first, it found that the intervener had furnished proof of genuine use of the earlier trade mark in respect of some of the goods and.

This decision was appealed again.

The General Court dismissed the appeal. In brief, according to the Court, one word trademark can be deemed as used even represented in graphics and colors if there are no significant differences with its dominant and distinctive elements. In the case at hand, although used in a graphic representation, the dominant and distinctive element is still the word part. From that perspective this constitutes proof of use of the registered word mark.