Lessons from Lidl on genuine trade mark use

Lessons from Lidl on genuine trade mark use
How will the court approach the evidence needed to substantiate the genuine use of a registration? Catherine Wolfe, a partner at Boult Wade Tennant, considers whether the recent case of LidlSiftung & Co KG (Lidl) v Office for Harmonisation in the Internal Market (OHIM)  T-300/12 [2014] All ER (D) 93 (Oct) is part of a broader picture in relation to the enforcement of older trade mark registrations.

A brief background

The General Court of the European Union upheld the action brought by Lidl for the annulment of OHIM's decision to allow A Colmeia do Minho Ldª's opposition to to Lidl's FAIRGLOBE Community trade mark application.

What issues did this case raise?

This case is about evidence of genuine trade mark use. Essentially, the primary aspect of this case is the General Court’s critical commentary on the quantity and quality of evidence needed to substantiate the genuine use of a registration which is more than five years old and which has been asserted against a third party in an opposition. It fits well with Wedl & Hofmann v Reber: C-141/13. These cases are part of a broader picture in relation to the enforcement of older trade mark registrations—I see them both as part of a trend.

To what extent is the judgment helpful in clarifying the law in this area?

The judgment is extremely helpful because it serves as a clear warning to all practitioners. ‘Sample evidence’ will not suffice—it could be evidence of ‘token use’ rather than a small illustration of extensive use.

We had early clarification on the issue of adequate evidence from Kabushiki Kaisha Fernandes v Office for Harmonisation in the Internal Market (Trade Marks and Designs): T-39/01 [2003] IP & IT 290 [2002] All ER (D) 184 (Dec), which set out the exact criteria for showing proper evidence of use. The evidence, according to the Curia’s own summary, is supposed to consist of:

'[...] indications concerning the place, time, extent and nature of the use. Genuine use cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effe

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