General Court: No Genuine Use of DRACULA for Vodka

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Published in “WTR Daily”, part of World Trademark Review, in June 2014

In European Drinks SA v Office for Harmonisation in the Internal Market (OHIM) (Cases T-495/12 to T-497/12, June 5 2014), the General Court has held that six invoices relating to a period particularly close to the application date of the contested Community trademark (CTM), a photograph and a promotional text did not demonstrate genuine use of the earlier trademark on which the opposition was based.

In February 2009 Alexandrion Grup Romania SRL filed three applications for DRACULA BITE with OHIM for goods in Classes 33 of the Nice Classification (“alcoholic beverages (except beers)”), and services in Classes 35 (“advertising; business management; business administration; administrative services; collection, for others, of alcoholic beverages (except transport thereof) enabling consumers to view and purchase these goods conveniently”) and 39 (“transport; packaging and storage of goods; tour operating and organising”).

In February 2010 European Drinks SA filed notices of opposition based on a national figurative trademark registered in 1995 for, among other things, goods in Classes 33 (“alcoholic beverages (except beers)”) and services in Class 35 (“advertising; business management; business administration; office functions”).

During the examination of the oppositions, European Drinks filed evidence to demonstrate genuine use of its earlier trademark in Romania, namely six invoices from the period from February to April 2009, a photograph and a copy of a promotional text. It did not file any additional evidence, despite being requested to do so.

The Fourth Board of Appeal of OHIM dismissed the action, considering that the documents filed by European Drinks did not demonstrate genuine use of its earlier trademark. The board found that the six invoices, which were the only dated documents, covered a period of only two-and-a-half months and each indicated a sale of 432 units of the products in question bearing the earlier mark (a quantity that was considered marginal, bearing in mind the average monthly consumption of vodka on the Romanian market). European Drinks had not provided any information as to the identity of the companies mentioned on the invoices (Scandic Distilleries SA and SC TGIE) or the link established between itself and these companies. The Board of Appeal also found that the photograph and the promotional text showed a use of the earlier mark in a form which significantly altered the distinctive character of the sign.

The General Court upheld the decision of the Board of Appeal based on its case law regarding genuine use, namely that a mark must be 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. The condition relating to genuine use of a trademark requires that the mark, as protected on the relevant territory, be used publicly and outwardly.

In this case, in relation to the six invoices, the General Court considered that their quantity and the fact that they were issued on dates close to the publication of Alexandrion’s CTM applications could not entirely exclude the possibility of a purely token use of the earlier trademark. In the court’s view, European Drinks could have filed additional evidence which could have supported the information contained in the six invoices on the extent of the use of the earlier trademark, and it was not difficult for European Drinks to obtain such evidence. Moreover, there was nothing in the documents before the court to show that European Drinks claimed that it was impossible to supply other evidence.

The court concluded that the evidence filed, considered as a whole, did not provide sufficient indications of the place, time, extent and nature of use of the earlier trademark. Further, it did not consider it necessary to rule on the question of whether the differences in the form in which the earlier mark was used and the form in which it was registered altered the distinctive character of the mark as it was registered.

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