FRIDAY, 14 JANUARY 2011
Genuine use of PINE TREE by tacit consent
The figurative trademark PINE TREE was registered in 1998 for Class 28 products “Sporting articles for martial arts including karate, judo and kung-fu; tang so do, kendo and tae kwon do” and was the object of an application for revocation by Mr. Ho Hwa Park on the grounds of Art. 51 (1) (a) and 56 (1) (a) of Regulation n°207/2009.
The Cancellation Division had upheld the revocation finding that the CTM proprietor Mr. Lee had not proven genuine use of the trademark in the Community during the 5 years preceding the date of application (June 2001- 2006). The Board of Appeal overturned the decision considering that the mark had been put to genuine use by the proprietor’s ex-wife, with its consent, and despite a small turnover.
The General Court confirmed in its judgment T- 28/09 the appreciation of the Board in accordance with Art. 15 (1) and established case-law that use of the mark must not be merely token but even a minimum use can be held genuine: here, 13 invoices from the relevant period together with catalogues proved that the trademark was genuinely used for said goods. The appellant has not contested the small turnover, which could be explained by the fact that the goods sold under PINE TREE are aimed to a restricted public.
The appellant also claimed violation of Article 15 (2) CTMR which states: “Use of the Community trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor.” Mr. Lee had transferred its sports school and its sports articles shop to its ex-wife, and the appellant claimed it thereby also renounced to any rights on the use of the trademark PINE TREE.
The court affirmed that the burden of proof rested on Mr. Lee to show that it had given consent to his ex-wife.
As evidence submitted, it turns out that Mrs. Lee had written 2 contradictory affidavits stating actual consent or lack thereof from the proprietor, confirmed by subsequent affidavits, stating she had been under pressure to make such affidavits and taking back her statements she had received or never had such consent to use the trademark.
The BOA concluded that these affidavits could not be used. However, Mr. Lee also produced an affidavit attesting it had given its consent. In addition, in the contract establishing the transfer of business dated 1998, Mrs. Lee was bound to repay to Mr. Lee some debts on the basis of the profits from the shop and school, thus the BOA interpreted that the proprietor had an interest in the carrying on of business, and thereby implicitly gave its consent to use the trademark, in order to receive his share of payments from the benefits.
Finally, the appellant claimed bad faith (on Articles 52 and 53 CTMR) of Mr. Lee when applying for CTM registration, in breach of contract clause that it would waive any IP rights in its own name when the contract ended with the manufacturer. The Court confirmed the BOA had correctly rejected those invalidity claims as not admissible because they constituted new grounds not previously invoked before the Cancellation Division .
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