Opposition and Cancellation Proceedings: Proof of Use – Subcategories of Goods and Services

2 Art. 15(1) CTMR – Use of CTM genuine useIf, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.

3 Art. 15(1) CTMR - Use of CTM The following shall also constitute use within the meaning of the first subparagraph: (a) use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered; (b) affixing of the Community trade mark to goods or to the packaging thereof in the Community solely for export purposes.

4 Art. 15(2) CTMR - Use of CTM Use of the Community trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor.

5 Proof of use Art. 42(2) CTMR - Opposition genuine useIf 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.

6 Proof of use Art. 42(2) CTMR - Opposition absence of proof… 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.

7 Proof of use Art. 57(2) CTMR - Invalidity genuine useIf 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, 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.

8 Proof of use Art. 57(2) CTMR - Invalidity … If, at the date on which the Community trade mark application was published, the earlier Community trade mark had been registered for not less than five years, the proprietor of the earlier Community trade mark shall furnish proof that, in addition, the conditions contained in Article 42(2) were satisfied at that date. In the absence of proof to this effect the application for a declaration of invalidity shall be rejected.

9 Proof of use Art. 57(2) CTMR - Invalidity … 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 purpose of the examination of the application for a declaration of invalidity, be deemed to be registered in respect only of that part of the goods or services.

10 Proof of use Art. 51(1)(a) CTMR - Revocation The rights of the proprietor of the Community trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings: genuine use(a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use;

11 Proof of use Art. 51(1)(a) CTMR - Revocation (a) … however, no person may claim that the proprietor's rights in a Community trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed.

12 Art. 51(2) CTMR - Revocation Where the grounds for revocation of rights exist in respect of only some of the goods or services for which the Community trade mark is registered, the rights of the proprietor shall be declared to be revoked in respect of those goods or services only.

13 Consequences of non-use Use / non-use –Request of proof of use (i.e. genuine use) of the earlier mark in opposition and invalidity proceedings – narrow scope of the earlier rights unless use is established –Ground for revocation (Art. 51(1)(a) CTMR) unless use of the contested mark is proved

14 Directive to approximate the laws of MS relating to TMs Art. 10 – Use of trade marks Analogous to CTMR Sanctions for non-use genuine useNon-use – no genuine use for respective goods or services within 5 years period (following the registration or during any time Proper reasons for non-use Use of the trade mark in a form which does not alter the distinctive character, use of the mark on packaging

15 Directive to approximate the laws of MS relating to TMs Art. 11 – Sanctions for non-use Facultative provision Non-used trade mark can not be ground for invalidity proceedings; as objection to registration of the latter trade mark; invoked in infringement proceedings Use proved only for part of goods or services – the trade mark is deemed to be registered only for these goods or services

16 Directive to approximate the laws of MS relating to TMs Art. 12 – Grounds for revocation Analogous to CTMR Trade marks would be revoked if genuine use is not established Art. 13 – Partial use Analogous to CTMR If use proved only for part of respective goods or services, the trade mark shall be refused / revoked / declared invalid only as regards the respective non-used goods or services

17 Act on Trademarks Act No. 441/2003 Coll. Art. 13 – Use of a trade mark genuine useIf, within the period of five years following the registration, the proprietor of the trade mark has not put the trade mark to genuine use for goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trade mark shall be subject to the sanctions provided for in this Act (Sections 14 and 31), unless there are proper reasons for non-use.

18 Act on Trademarks Act No. 441/2003 Coll. Art. 13 – Use of a trade mark The proper use of a trade mark includes also –a) use of the trade mark in a form differing in elements which do not alter the distinctive character of the trade mark in the form in which it was registered, –b) affixing of the trade mark to goods or to the packaging of goods solely for export purposes.

19 Act on Trademarks Act No. 441/2003 Coll. Art. 13 – Use of a trade mark The use of a trade mark on the basis of a licence agreement and the use of a collective trade mark by an authorised person shall be deemed to constitute use by the proprietor.

20 Act on Trademarks Act No. 441/2003 Coll. Art. 14 – Some consequences of non-use of trade mark A trade mark cannot be revoked because of an earlier trade mark, if this earlier trade mark does not fulfil the conditions of use as mentioned in Section 13. If the earlier trade mark is not used within the meaning of Section 13 for all goods and services for which this trade mark is registered, the earlier trade mark can constitute a ground for revocation of a later trade mark only in respect to those goods and services, for which the earlier trade mark is used.

21 Act on Trademarks Act No. 441/2003 Coll. Art. 31 – Revocation The Office shall revoke the trade mark in a proceeding started at the request of a third person properly used a) if the trade mark has not been properly used within the continuous period of 5 (five) years for goods or services in respect of which the trade mark is registered, and there are no proper reasons for non-use; the use which commenced or which was resumed following 5 (five) years of non-use of the trade mark within three months preceding the filing of the request for revocation shall be disregarded where the preparations for the commencement or the resumption of the use occurred only after the proprietor becomes aware that a request for revocation of the trade mark might be filed;

22 Genuine use genuine useAssessment of genuine use – the same criteria are applied in cancellation proceedings (both revocation and invalidity) as in opposition proceedings as regards assessment of proof of use of CTMs. Genuine use – principles laid down in decisions of EC courts – Ansul, La Mer, Verein Radetzky-Orden, Silberquelle, etc.

23 Genuine use Ansul, C-40/01 Genuine use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin

24 Sub-categories T-126/03 ALADDIN …if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong.

25 Sub-categories T-126/03 ALADDIN …However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category.

26 Sub-categories … It further said that the proprietor of the earlier trade mark should not be stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner.

27 Sub-categories O DELI, 29/03/2007 Challenged as regards the goods in Cl. 30 and 32 (pastries; drink mixtures and powders) Used for chocolate bars (fall within the category of chocolate and non-chocolate confectionery) Trade mark remained registered for chocolate and non-chocolate confectionery (list of goods or services consists of precisely defined categories)

28 Sub-categories O OSTRAVSKÝ KAHAN, 03/05/2007 Registered for goods in Cl. 32 and 33 (beers, mineral water, sparkling and other non-alcoholic beverages, syrups and other preparation for making beverages, fruit beverages and fruit juices; wine, spirits, liqueurs) Used for red and white wine; use proved for wine Trade mark revoked as regards the remaining goods

29 Sub-categories O HIRSCH, 13/05/2008 Registered for goods in Cl. 25, 28 and 30 (clothing; toys; confectionery, confectionery goods and tablets, gum confectionery, essences for confectionery, jellies, bonbons, in particular menthol bonbons, bonbons with toppings, with filling, liqueur bonbons, drops, caramels, chocolate bonbons, all kinds of chocolate, chewing gum and tablets, rusks, lollipops, ice cream, frozen confectionery)

30 Sub-categories O HIRSCH, 13/05/2008 Used for laskonky (cakes) Trade mark remained registered for confectionery (also with jam), petit fours cakes, waffles, cookies, biscuits, müsli bars

31 Sub-categories O SALON, 16/12/2008 Registered for goods in Cl. 32 and 33 (beer; wine, spirits and liqueurs, champagne wine, sparkling wine) Used for champagne wine (fall within the category of wine, champagne wine and sparkling wine) Champagne wine – almost identical with sparkling wine, both these goods can be subsumed under wines) Trade mark remained registered for wine, champagne wine, sparkling wine

32 Sub-categories How to establish sub-categories? Are there any criteria? – classification(class headings), similarity, nature of goods or services, purpose of use, targeted public… function of a trade mark? How broad must the general category be to enable splitting up into special categories? Impact on the general public – possibility of confusion? Is public able to distinguish goods or services being marketed/provided

33 Genuine use / proof of use – Use in the course of trade Effect of ruling of CFI T-225/06, T-257/06, T-309/06, Bud..Art. 8(4) CTMR, … sign used in the course of trade of more than mere local significance.. Means of assessing proof of use, i.e. genuine use, can not be used when assessing the sign as defined in Art. 8(4) CTMR

34 Industrial Property Office Czech Republic