How close is too close? Statements of support from connected parties in genuine use examined

This article first appeared on WTR Daily, part of World Trademark Review, in March 2017. For further information, please go to www.worldtrademarkreview.com.

In MI Industries Inc v European Union Intellectual Property Office (EUIPO) (Case T-30/16), the General Court has clarified several principles relating to proof of genuine use, in particular the notions of ‘close links’ and ‘third parties’. The General Court rather unusually went further than the facts of the case and made a number of statements of general applicability.

In this case, an affidavit by the opponent’s sole customer, who was also their importer and distributor, was held to have been given too little importance by the Board of Appeal. The Board of Appeal held that the customer was not a “third party” and, therefore, the affidavit should have little probative value. The General Court overruled this and stated that the customer must still be considered to be a third party and an independent source. The existence of contractual links between two distinct entities does not, on its own, mean that they have “close links”, such as to render the statement of less probative value. The customer could not be compared to an external consultant with contractual links, as in the SMART WATER decision (Case T-250/13).

The General Court also went on to explain that the expression “a person with close links to the party concerned” refers, in essence, to employees of the party concerned, to employees of its subsidiary or to an external service provider who should be treated in the same way as an employee of the party concerned.

The evidence provided was also held to be sufficient to prove that the goods had actually entered the market. That evidence included invoices addressed to the opponent’s customer, an invoice from that customer to an individual and a mock-up of a label. The Board of Appeal’s criticism of an absence of invoices addressed to end consumers was rejected and the General Court reiterated that outward use of a mark does not necessarily mean that its use is aimed at end consumers. The relevant public to which the trademark is addressed comprises not only end consumers but also specialists, industrial clients, and other professional users.

Niamh Hall, European Trademark Attorney

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