Genuine use of a trademark in the EU as a whole may be proved in certain circumstances by showing use of the mark in a single member state.
Intas Pharmaceuticals Ltd v EUIPO, judgment of the General Court, 7 November 2019 (Case T-380/18)
For many years it was a controversial issue whether use of a trademark in one member state of the EU—even quite extensive use—suffices to show use of the trademark in the EU as a whole. Now it appears that the view is being established that use of a trademark in one member state (and even in just one city in that member state) may, in certain circumstances, suffice to show genuine use of the trademark in the EU as such.
This was the conclusion reached by the General Court (part of the Court of Justice of the European Union) in its judgment of November 2019 in a case involving opposition to registration by the Indian company Intas Pharmaceuticals Ltd of the trademark INTAS (EUTM-014153811). The mark was filed on 26 May 2015 with the European Union Intellectual Property Office for goods in classes 5 and 10, intended to designate, among other goods, prescription medicines and injection apparatus and instruments, including syringes pre-filled with prescription-only medicine.
Registration of the trademark INTAS was opposed by the Spanish company Laboratorios Indas SA, relying on its rights to the earlier trademarks for INDAS (including registration of EU trademark EUTM-003380524 and Spanish trademark 2698682). The INDAS marks were registered inter alia for goods in classes 5 and 10 and intended to designate pharmaceuticals and sanitary products, as well as disposable products for use during medical or surgical procedures.
The Opposition Division of EUIPO upheld the opposition, and after considering an appeal by the Indian company, the Board of Appeal upheld that decision. It found that there was a likelihood of confusion between the INTAS and INDAS marks, due to the degree of similarity between the marks and the goods covered by the marks, even if the relevant public (including professionals) displayed a high level of attention. The Board of Appeal also held that the Spanish company had met the requirement to prove genuine use of the earlier trademarks in the EU by submitting sufficient proof of use of both earlier trademarks for relevant goods in Spain.
More extensive case law
The Indian company applied to the General Court to annul the decision by the Board of Appeal, alleging that the board had erred in finding use of the trademark in Spain alone as sufficient to show genuine use of the trademark in the European Union. Citing the judgment of the Court of Justice from 2012 in Leno Merken (C‑149/11, EU:C:2012:816), Intas argued that “an earlier EU trade mark must be used in a larger area than the territory of a single Member State in order for its use to be regarded as genuine and that it is only in certain specific circumstances that use in a single Member State is sufficient to prove that the use of that mark within the European Union is genuine.”
The General Court rejected this interpretation, pointing out to the contrary that Leno Merken upheld the view that use of an EU trademark in a single member state, or even in a single city in a member state, may be sufficient to satisfy the criterion of territorial scope. It also stressed, following Leno Merken, that “territorial scope is only one of several factors that have to be taken into account in assessing whether use of an EU trade mark is genuine,” and “whether an EU trade mark has been used in one Member State or several is irrelevant. What matters is the impact of the use in the internal market…. Whether that use results in actual commercial success is not relevant.”
In the judgment in this case, the General Court discussed in great detail whether the use of a trademark in one member state suffices to show genuine use of the trademark in the European Union as such. The evidence presented by the Spanish company here included invoices in Spanish issued to various customers, including pharmacies in numerous Spanish cities, catalogues and price lists in Spanish, and ads published in the Spanish press. None of the evidence involved use of the trademarks outside of Spain. As the court held, “All the evidence provided by the intervener shows use that is sufficient to maintain or create market share in the market concerned and to contribute to a commercially relevant presence of the goods.” In the court’s view, the intervener had proved use of the mark INDAS in Spain, and “since the borders of the Member States had to be disregarded, that use was sufficient to prove use in the European Union.”
The court also upheld the findings by the Opposition Division and the Board of Appeal on the likelihood of confusion. Consequently, the court denied the Indian company’s application and upheld the Spanish company’s opposition.
How to prove genuine use of a trademark?
The judgment by the General Court in Intas Pharmaceuticals constitutes an attempt to systematise the guidelines for proving genuine use of a trademark in the European Union. It follows from the ruling that borders between member states should be disregarded, and use of a trademark in a single member state (or several) may suffice to meet the requirement of territorial scope.
This judgment could influence the practice of proving use of trademarks in the EU by demonstrating use in a single member state, or even in a single city. It also clarifies that the properties of the given goods or services must be taken into account, as well as the impact of use of a trademark on the internal market—whether use of the mark is quantitatively sufficient to maintain or create market share and contribute to a commercially relevant presence of the goods and services bearing the mark. Whether such use results in commercial success is irrelevant.
Marzena Białasik-Kendzior, Intellectual Property practice, Wardyński & Partners