COMMUNITY TRADEMARKS
application: If on the date on which the contested CTM application was published the earlier mark was registered for at least five years, the requested party additionally has to show proof of use of the CTM during the five years preceding the date of publication of the application. In some instances these two relevant periods
overlap fully or partially, while in other cases they are not connected at all, and are simply running, with or without interruptions, parallel to each other. Regardless of whether the party intends initiate the opposition or proceedings before OHIM, it
to
invalidation is essential
to take into account a possibility of being requested to furnish proof of use. Terefore, it is essential for the opponent beforehand to make a good assessment of its ability to provide proof of genuine use of the mark on which the proceedings are based. Te opponent must be aware that its potential
failure to provide proof of genuine use may not only result in losing the proceedings before OHIM but may also put its trademark in danger of being declared lapsed due to non-use. Before taking any action, it is also important to be concerned about the costs of filing the opposition or the request for invalidation at OHIM, especially if it involves some risk of being rejected. To sum up, one might say that opposition or
legal measures are provided under local legislation of the member states. If the owner of an earlier mark complies
with the request for showing proof of use, the essential examination of
the proof filed by
the owner will be made in the same way in opposition and invalidation proceedings.
Evidence of use According to rule 22(3) of European Commission Regulation No. 2868/95 of December 13, 1995 implementing Council regulation No 40/94 on
the CTM, the
indications and evidence for showing proof of use shall consist of indications concerning the place, time, extent and nature of use of the opposing party’s trademark for the goods and services it is registered for (and on which the opposition is based). Documents supporting the evidence of use
should include packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and statements in writing, sworn or affirmed or having a similar effect under the law of the state in which the statement is made. In addition to the above, genuine use shall also
count as use of the mark in a form that may slightly differ with regard to some elements of the form directly covered by the registration. However, these elements cannot alter the distinctive character of the mark as originally registered. Generally,
the material requested as proof
of use of the earlier mark does not differ in opposition or invalidation procedures. However, the difference lies in the relevant time of use. In opposition proceedings, a party that is
requested to show proof of genuine use of the mark on which an opposition is based must simply prove that it has used the mark during the period of five years preceding the date of the opposed CTM application’s publication. On the other hand, in invalidation
proceedings there are two relevant periods during which the use has to be established: • Before the application for invalidity: Te party must offer proof that the earlier mark has been put to genuine use during the period of five years preceding the date of the application for a declaration of invalidity, provided the earlier CTM has at that date been registered for more than five years; and • Before the publication date of the contested
48 World Intellectual Property Review Annual 2015 World Intellectual Property Review November/December 2014
Izabella Dudek-Urbanowicz is head of trademarks and designs at Patpol. Her key areas of practice include trademarks, industrial designs, and domain names. She represents Polish and international clients in litigation matters before the Polish Patent Office, Polish courts and OHIM. She can be contacted at:
izabella.urbanowicz@patpol.com.pl
invalidation proceedings before OHIM may turn out to be a ‘double-edged sword’ for the opponent, in particular if it is not certain of its own ability to provide proof of genuine use.
www.worldipreview.com
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