On 17 July 2014, the Court of Justice of the European Union (the "ECJ") handed down a judgment in case C-141/13. It upheld the judgment of the General Court of the European Union (the "General Court") which, in turn, had confirmed the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market ("OHIM") rejecting the opposition filed by Reber against the registration of trade mark 'Walzertraum' by W&H.
When opposing the registration of a trade mark, the opponent must furnish proof that its earlier trade mark has been put to genuine use in the territory where it is protected for five years prior to the date of the trade mark application against which opposition is filed. The use of a trade mark is genuine when the following conditions are met: (1) the trade mark is used in order to identify the origin of the good or service; (2) the use occurs publicly and outwardly; and (3) the exploitation of the trade mark is real (See, VBB on Belgian Business Law, Volume 2014, No. 6, p. 9 – 11, available at www.vbb.com).
In the case at hand, the ECJ did not contest that the German Walzertraum mark had been used but simply considered that Reber had not been able to demonstrate genuine use of its earlier trade mark.
The ECJ dismissed Reber's allegations that only multinationals could meet the genuine use requirements as these supposedly focus on volumes of sales. It espoused the reasoning of the General Court according to which, in the assessment of genuine use, no difference is made between SME's and multinationals. Indeed, the General Court held that in assessing whether the commercial exploitation of the trade mark is real, regard must be had to the scale and frequency of use of the trade mark and the ability for the use of the trade mark to maintain or create a share in the market for the products or services protected by the trade mark. Consequently, the appreciation of the genuine use is based on objective criteria regardless of the size of the trade mark owner.
The ECJ added that the General Court, when assessing the genuine use, undertook a global assessment as it took into account sales volumes, the nature and characteristics of the product, the geographical scope of the use, Reber's advertising, the continued use of the trade mark, etc.
Reber contended that the products at stake being pralines, their artisanal character must be taken into consideration when evaluating the market penetration of the product. The ECJ observed that the products and services specified in Reber's trade mark application were chocolates, bakery products and confectionery but not pralines. Yet, the appreciation of the genuine use must be based on the products and services as specified in the trade mark application.
Finally, Reber argued that OHIM had violated the principle of equal treatment by reaching different conclusions in similar cases concerning the same opponent. The ECJ rejected that argument and held that OHIM must assess the genuine use of a trade mark on a case-by-case basis. Neither OHIM, nor the General Court is bound by OHIM's previous decisions.
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