One of the main challenges practitioners face in proceedings before the EUIPO is determining what constitutes sufficient evidence of use of a registered trade mark in inter partes proceedings, whether opposition actions or invalidity proceedings based on relative grounds. In such cases, the party relying on an earlier right must demonstrate that the earlier mark has been put to genuine and sufficient use. The same applies in revocation proceedings based on non-use.
In its judgments in Cases T-564/24 and T-563/24, the General Court of the European Union examined not only the extent of the use of two trademarks subject to revocation applications, but also the limits of the obligations incumbent upon both the trademark proprietor and the EUIPO regarding the evidence submitted, the explanations provided in relation to that evidence, and the Office’s role in assessing it.
The cases concerned two highly similar EU trademarks for the sign “LAV”, owned by one of the world’s leading manufacturers of glassware products, including drinking glasses, stemware and glass tableware for domestic and hospitality use. The German company Olav GmbH filed applications for revocation of those marks, which had been registered in 2013, following oppositions brought by Gürok Turizm ve Madencilik AŞ against several of its trademark applications.
The EUIPO Cancellation Division partially revoked the LAV trademarks, restricting their protection to certain goods in Class 21, including household or kitchen containers, glassware not included in other classes, glasses, cups and plates, among others.
Olav GmbH subsequently appealed the decisions, leading to rulings by the Fourth Board of Appeal of the EUIPO, which overturned the Cancellation Division’s findings and ordered the full revocation of the LAV trade marks. Those decisions were then challenged before the General Court by Gürok Turizm ve Madencilik AŞ.
A noteworthy aspect of the proceedings was the position adopted by the EUIPO itself in its written submissions before the Court. The Office aligned itself with the arguments of the trademark proprietor and also sought annulment of the Board of Appeal’s decisions, considering that they were affected by an error of law.
As the General Court recalled, although the EUIPO does not have standing to bring proceedings against decisions of its own Boards of Appeal, neither is it required to systematically defend every decision under challenge or to seek dismissal of every appeal lodged against them. Accordingly, there is nothing preventing the Office from supporting the arguments of an appellant. What it cannot do, however, is seek annulment or amendment of a Board of Appeal decision on grounds not raised by the appellant.
The key issue before the Court was whether the EUIPO had imposed an excessively burdensome evidential requirement by demanding a level of explanation and correlation between documents that went beyond what could reasonably be expected in revocation proceedings. The applicant argued that the Board of Appeal had erred in finding the evidence concerning the extent of use insufficient and had reached contradictory conclusions in its assessment.
The evidence submitted included more than 900 pages of invoices and commercial documents, 2,919 sales entries identified by the reference “LV” (for “LAV”) relating to transactions across numerous EU Member States, and turnover approaching €6.5 billion during the relevant period. The Board of Appeal criticised the proprietor for failing to establish and explain individually the correspondence between each invoice entry, nearly 3,000 in total, and the products appearing in the catalogues with which they were allegedly associated.
The General Court found that such a requirement clearly exceeded what could reasonably be expected in revocation proceedings and amounted to a disproportionate evidential burden. It also emphasised that the Board of Appeal had never formally requested additional clarification from the proprietor and therefore could not later reproach it for an alleged lack of cooperation or failure to provide further explanations.
The Court further held that the diligent comparison undertaken by the EUIPO between product codes appearing in photographs and catalogues, on the one hand, and invoices on the other, could not be regarded as mere speculation or assumption. Rather, it formed part of the rational and logical assessment required when determining genuine use. The Court therefore agreed that the Cancellation Division had acted within its powers when establishing, through its own assessment of the evidence as a whole, the link between the products shown in catalogues and photographs and those identified in invoices by means of identical product codes, contrary to the Board of Appeal’s findings that such correlation could only be provided by the proprietor.
Importantly, the judgments also introduced a significant consideration: imposing an unreasonable or excessive burden of proof on a trademark proprietor may lead to an infringement of the principle of good administration, enshrined in Article 41 of the Charter of Fundamental Rights of the European Union.
These rulings reinforce the principle that evidence of genuine use must be assessed globally and with a degree of flexibility, rejecting excessively formalistic interpretations. They also underline that the EUIPO cannot require exhaustive and disproportionate demonstrations where a coherent body of invoices, catalogues and commercial documents is capable of reasonably establishing genuine commercial use of the contested trade mark within the European Union.
