Which party bears the burden to prove genuine use of a trademark? – an EU Court decision

The European Court has ruled in case C‑183/21 Maxxus Group GmbH & Co. KG v Globus Holding GmbH & Co. KG.

The case, which poses the question of who bears the burden to prove genuine use of a trademark, has the following background:

Under Paragraph 49(1) of the Law on the protection of trademarks and other signs) of 25 October 1994 (BGBl. 1994 I, p. 3082, the registration of a trademark is, upon application, to be cancelled on the ground of revocation if the trademark has not been used within a continuous period of five years.

Under Paragraph 55(2)(1) of that law, any person may bring an action pursuant to Paragraph 49 thereof for a declaration of revocation of a trademark in so far as he or she pleads non-use of that mark.

The facts giving rise to the dispute in the main proceedings and the question referred for a preliminary ruling

Globus is the proprietor of the word mark MAXUS. That mark was registered in July 1996 at the German Patent and Trade Mark Office, Germany for a number of goods in Classes 1 to 9 and 11 to 34.

In addition, Globus is the proprietor of the following figurative mark, registered at the German Patent and Trade Mark Office in May 1996 for goods in Classes 1 to 9 and 11 to 34:

On 28 November 2019, Maxxus brought before the Regional Court, Saarbrücken, Germany, which is the referring court, an action seeking, in essence, a declaration revoking Globus’s trademarks referred to in paragraphs 13 and 14 of the present judgment on the ground of non-use.

In support of its application, Maxxus submits that over the past five years Globus did not make a use of those trademarks that is such as to preserve its rights over them. Maxxus states that it has searched online, including on Globus’s website, and that those searches have provided no indication of such use. If the term ‘MAXUS’ is entered in the internal search tool on Globus’s website, two results are displayed, which refer to a beverage store in Germany operated by a company connected to Globus. However, it is apparent from research on the internet that the beverages sold by that company bear not the trademark MAXUS, but other marks of third-party manufacturers. That was confirmed by investigations carried out in the store in question by a detective agency instructed by Maxxus.

Globus disputes those contentions and maintains that it has made a use of the two trademarks at issue that is such as to preserve its rights over them.

The referring court points out that, in the context of proceedings for revocation of a trademark for non-use, under the case-law of the Bundesgerichtshof (Federal Court of Justice, Germany) a distinction is to be drawn between the burden of setting out the facts (Darlegungslast) and the burden of proof. As regards the setting out of the facts, it is incumbent upon the applicant to set out, in a substantiated manner, the matters intended to show non-use of the trademark. For that purpose, it should, using its own resources, conduct an investigation to ascertain whether the proprietor used the mark concerned in such a way as to preserve its rights. Since the applicant does not, generally, have knowledge of the business processes of the proprietor of the mark, the proprietor could then bear a ‘secondary’ burden of setting out the facts. As to the burden of proof in respect of non-use, that burden rests on the applicant.

The referring court observes that, following the judgment of 22 October 2020, Ferrari (C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 82), in which the Court of Justice ruled that the burden of proof that a trade mark has been put to ‘genuine use’, within the meaning of Article 12(1) of Directive 2008/95, rests on the proprietor of that mark, the abovementioned case-law of the Bundesgerichtshof (Federal Court of Justice) relating to the burden of proof is no longer tenable. It considers, however, that the question whether national law may continue to place the burden of setting out the facts on the applicant remains unresolved. In its view, that question must be answered in the affirmative.

In that regard, the referring court provides explanation of the distinction drawn in German law between the burden of setting out the facts and the burden of proof. The burden of setting out the facts requires a party to be as concrete as possible in its submissions, at the risk of losing the case if it does not fulfill that obligation. German procedural law also imposes on the defendant a secondary burden of setting out the facts. Each of the parties is required to carry out investigations in their own sphere of activity. Those various burdens and obligations are separate from the burden of proof. The burden of setting out the facts differs from the burden of proof in that each party must present submissions concerning the facts that are known to it or can be researched with reasonable effort.

The referring court takes the view that EU law, and, in particular, Directive 2015/2436, do not preclude the burden of setting out the facts from being placed on the party that applies for revocation of a trademark for non-use. That burden may be justified by a weighing up of the interests of the parties concerned. In proceedings for revocation of a trademark for non-use, it is incumbent upon the applicant to verify, to the extent possible, whether the defendant has put its mark to genuine use. It is only after such an investigation has been conducted and its results set out that the defendant is to be required to reveal the use that it has made of its mark. Since no specific legal interest in bringing proceedings is required in order to apply for revocation of a trademark for non-use, any person might require the proprietor to disclose the use that it makes of its mark, entailing a serious risk of proceedings being brought that constitute an abuse. The applicant could require the proprietor of the mark concerned to give up trade secrets and to make considerable efforts in the research necessary to demonstrate genuine use of its mark.

Since Directive 2015/2436 does not govern the national procedure relating to an application for revocation of a trademark for non-use, the referring court takes the view that the judgment of 22 October 2020, Ferrari (C‑720/18 and C‑721/18, EU:C:2020:854), does not preclude the applicant from bearing a burden of setting out the facts as contemplated by that court.

It was in those circumstances that the Regional Court, Saarbrücken decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Is EU law, in particular with regard to [Directive 2008/95], in particular in Article 12, and Directive [2015/2436], in particular in Articles 16, 17 and 19, to be interpreted as meaning that the effet utile of those provisions prohibits an interpretation of national procedural law which:

(a)  imposes on the applicant in civil proceedings for cancellation of a nationally registered trademark on grounds of revocation for non-use a burden of setting out the facts, as distinguished from the burden of proof; and

(b)  requires the applicant, in the context of that burden of setting out the facts,

–   to make, in such proceedings, substantiated submissions regarding the defendant’s non-use of the trademark, to the extent that it is possible for the applicant to do so; and

–  to carry out, for that purpose, its own research into the market, in a manner which is appropriate to the request for cancellation and to the specific nature of the trademark concerned?’

The EU Court’s position:

Article 19 of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks must be interpreted as precluding a procedural rule of a Member State which, in proceedings concerning an application for revocation of a trademark for non-use, requires the applicant to carry out market research concerning the possible use of that mark by its proprietor and to make in that regard, to the extent possible, substantiated submissions in support of its application.

Kärcher has enforced successfully its color trademark rights

The option for registration of a color trademark is available in most countries around the world. The problem, however, is that this is a serious challenge. In many cases, Patent Offices refuse such registration based on absolute grounds. The only option to overcome the refusal is if the applicant proves acquired distinctive character for the relevant goods or services. This means that consumers would perceive the color as a sign of trade origin.

In light of that, the German manufacturer of cleaning machines Kärcher won a lawsuit in Benelux regarding its following registered mark for international color code RAL 1018 (zinc yellow):

The company has been using this color for all of its products for many years.

The competing company Varo started to offer identical products in yellow:

Kärcher initiated a lawsuit claiming trademark infringement.

The Court agreed with the German manufacturer finding a likelihood of confusion between both colors. The Court confirmed that Kärcher’s color had acquired secondary distinctiveness due to long market use. The slight variation of the color used by Varo was not enough to overcome the possibility of confusion taking into account that the goods were identical.

This dispute shows us how valuable a color trademark can be. In order for this to happen, however, the owner should use the color carefully and consistently in the time collecting the necessary evidence for distinctive character and reputation of the color among the consumers.

Source: Taylor Wessing – Saskia Bullens for Lexology.

Is MAIMAI similar to YAMAMAY in the EU?

The European Court has ruled in case T-589/20, Calzaturificio Emmegiemme Shoes Srl v Inticom SpA.

The dispute at hand concerns a European trademark application, filed by Calzaturificio Emmegiemme Shoes Srl, for a wordmark MAIMAI MADE IN ITALY in classes:

18: “Leather and imitation leather; goods made of these materials and not included in other classes; animal skins ”;
25: “Clothing; shoes; head hats ”;
26: “Shoe Clips”.

Against this application, an opposition was filed by Inticom SpA on the ground of an earlier EU mark for YAMAMAY for the same classes of goods and services.

After some back and forth the Board of Appeal of the EUIPO confirmed partially the opposition due to the identity and similarity of the goods and a low visual and medium phonetic similarity of the signs.

The letters Y and I are pronounced and sound similar to most of the languages in the EU.

The part MADE IN ITALY in the mark applied for is not distinctive because indicates the geographic origin of the goods.

Conceptual assessment between the marks is not possible because they don’t have a specific meaning.

In addition, the owner of the earlier mark proved successfully genuine use of its mark in the EU.

The decision was appealed but the European Court upheld the EUIPO’s conclusions.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

When a lip balm package can be a European trademark?

Registration of three-dimensional trademarks sometimes is gambling without any guarantees for success.

Recently the General Court of the European Union has ruled in the case C‑672/21 P, Eos Products Sàrl v EUIPO, which targets this issue.

The US company Eos Products filed the following three-dimensional European trademark, which represents an egg-shaped lip balm package for classes 3, 5, and 21:

The EUIPO refused registration of the sign based on absolute grounds – lack of distinctive character. What’s more, the Office concluded that the shape of the products does not depart significantly from similar products in the market, which is one of the requirements for 3D signs to be successfully registered as trademarks.

The decision was appealed with the argument that the sign had inherent distinctiveness. In addition, the US company submitted evidence for acquiring one.

The Board of Appeal dismissed the arguments for the inherent distinctive character of the product finding that many other similar forms existed which was clear even from the paper submitted by the applicant itself.

For the acquired secondary distinctiveness, the Board concluded that evidence was insufficient. Eos Products gave example for the use of the lip balm container but for packages in different colors. This was in contrast with the way how the 3D mark was applied for – in white.

What’s more all of the submitted lip balm packages included the word part EOS. The available surveys concerned only Germany and Austria which was not enough in order acquired distinctiveness to be proved for the entire territory of the EU.

So registration of three-dimensional trademarks can be a real challenge. In another similar case, however, the applicant of 3D mark for the lipstick container Guerlain successfully overcame an initial refusal by the EUIPO.

Source: IPKat.