Decision on Opposition No B 2 673 880 page: 3 of 12
25 Invoices referring to the sale of the opponent’s goods for the export purposes
together with related documents, during the period 2011-2015 to, inter alia,
Latvia, but also to countries located outside the EU, namely, China, Canada,
South Korea etc. The opponent’s trade mark appears in those documents in
relation to pasta, tomato based sauces, semolina and canned tomatoes. The
invoices bear important amounts which correspond to the sale of considerable
volume of the above-mentioned goods.
Numerous invoices related to the opponent’s participation in relevant European
foods fairs: ‘Sial’ Paris (France), ‘Anuga’ Cologne (Germany), Ife London
(United Kingdom), etc. The opponent’s mark is visible on the relevant
documentation. These documents refer to the relevant time.
4 invoices referring to the sale of the opponent’s olive oil under the opponent’s
trade mark in the period 2014-2016. The opponent also added the invoice
addressed to the Italian graphics company being in charge of the creation of
the opponent’s label for olive oil.
1 example of a label to be affixed on the opponent’s olive oil.
The Court of Justice has held that 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. Genuine use does not include token use for the
sole purpose of preserving the rights conferred by the mark. Furthermore, the
condition of genuine use of the mark requires that the mark, as protected in the
relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax,
EU:C:2003:145 and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before
01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in
accordance with its function, of use of the mark as registered, or of a variation thereof
according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for
the goods and services for which it is registered.
According to Article 18(1), second subparagraph, point (a), EUTMR, the following will
also constitute use within the meaning of paragraph 1: use of the European Union
trade mark in a form differing in elements that do not alter the distinctive character of
the mark in the form in which it was registered, regardless of whether or not the trade
mark in the form as used is also registered in the name of the proprietor. When
examining the use of an earlier registration for the purposes of Article 47(2) and (3)
EUTMR, Article 18 may be applied by analogy to assess whether or not the use of
the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
Therefore, the use of the mark in a form different from the one registered still
constitutes use of the trade mark as long as the differing elements do not alter the
distinctive character of the trade mark, and regardless of whether or not the trade
mark in the form as used is also registered in the name of the proprietor.
The purpose of this provision is to allow its proprietor to make variations in the sign
which, without altering its distinctive character, enable it to be better adapted to the
marketing and promotion requirements of the goods or services concerned
(23/02/2006, T-194/03, EU:T:2006:65, § 50).