Case T‑278/12

Inter-Union Technohandel GmbH

v

Office for Harmonisation in the Internal Market

(Trade Marks and Designs) (OHIM)

‛Community trade mark — Opposition proceedings — Application for the Community figurative mark PROFLEX — Earlier national word mark PROFEX — Genuine use of the earlier mark — Article 42(2) and (3) of Regulation (EC) No 207/2009’

Summary — Judgment of the General Court (First Chamber), 9 December 2014

The ratio legis for the requirement that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to a Community trade mark application is to restrict the number of conflicts between two marks where there is no good commercial justification deriving from the active functioning of the mark on the market. On the other hand, Article 42(2) and (3) of Regulation No 207/2009 on the Community trade mark and Rule 22(3) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark are not intended to give rise to an assessment of an undertaking’s commercial success or a review of its economic strategy; nor are they intended to restrict trade mark protection to cases where large-scale commercial use has been made of the marks. (see para. 26)

There is genuine use of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services, but genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly. In assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark. As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of time for which the mark was used and the frequency of use. (see paras 27-29)

In order to determine whether use of an earlier trade mark is genuine, an overall assessment must be carried out which takes account of all the relevant factors in the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned. (see paras 30, 31)