The rule that the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) is to examine facts of its own motion, as laid down in Article 76(1) of Regulation No 207/2009 on the Community trade mark, does not apply to the question of proof of genuine use of the mark in revocation proceedings brought before OHIM.

First of all, as is apparent from Article 15 of Regulation No 207/2009, if, within a period of five years following registration, the proprietor of a Community mark has not put it to genuine use in the European Union, the trade mark is to be subject to the sanctions provided for in that regulation, including in particular revocation of the trade mark rights.

Secondly, Articles 42(2) and 57(2) of Regulation No 207/2009 state specifically that it is for the proprietor of the mark to furnish proof of genuine use or proper reasons for non-use, failing which the application for a declaration of invalidity is to be rejected.

In that regard the fact that, unlike Articles 42(2) and 57(2) of Regulation No 207/2009, Article 51(1) of that regulation does not specify that it is for the proprietor to furnish proof of genuine use or of the presence of proper reasons for non-use cannot be interpreted as meaning that the EU legislature intended that the principle of the burden of proof should not apply in revocation proceedings.

The absence of specific provision regarding the burden of proof in Article 51(1) of Regulation No 207/2009 can, moreover, be explained easily given that the purpose of Article 51(1), entitled ‘Grounds for revocation’, is to set out the grounds for revocation of the mark, which does not require specific provision to be made regarding the issue of the burden of proof.

Articles 42 and 57 of that regulation, by contrast, are essentially procedural provisions. The specific purpose of paragraph (2) of each of those articles is to lay down the framework for when a procedural issue is raised by a defendant wishing to question the right of the applicant to bring the proceedings he has initiated.

It is because of that procedural context, which is specific to opposition and invalidity proceedings and which the EU legislature has laid down in order to settle such procedural issues — that must be resolved prior to the main proceedings of which they are a part — that the proof that the earlier mark has been put to genuine use must be made out by the proprietor of the mark and that, in the absence of such proof, the opposition or invalidity proceedings are to be dismissed.

By contrast, the fact that any procedural issue of this nature by definition cannot arise in the context of revocation proceedings readily justifies the situation that, although Article 57 of Regulation No 207/2009 concerns both revocation proceedings and invalidity proceedings, a provision such as Article 57(2) is restricted to invalidity proceedings.

Thirdly, the principle reflected in Articles 42(2) and 57(2) of Regulation No 207/2009, under which it is for the proprietor of the earlier mark to prove genuine use of that mark, is in reality merely an application of common sense and requirements of procedural efficacy.

It is common ground that the proprietor is the best placed — and in some cases the only party able — to furnish specific proof in support of the assertion that he has made genuine use of his mark or set out the proper reasons for non-use of the mark. This includes inter alia evidence establishing such use, of which Rule 22(4) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark provides a list of examples, such as packages, labels, price lists, catalogues, invoices, photographs or newspaper advertisements.

Thus, it may be inferred from a combined reading of Articles 15, 42(2), 51(1) and 57(2) of Regulation No 207/2009 that, in proceedings for revocation of a mark, it is for the proprietor of the mark, and not OHIM of its own motion, to establish genuine use of that mark.

Similarly, the conclusion in that regard must be that since Rule 40(5) of Regulation No 2868/95 provides that proof of genuine use must be made out by the proprietor of the mark, that rule merely specifies a principle relating to the burden of proof which, far from disregarding Regulation No 207/2009, on the contrary derives from the provisions and scheme of that regulation.

(see paras 53, 55-65)