New GC decision ruling on the proof of use request

The GC recently had another opportunity to address the requirements for proof of use (GC, judgment of 7 February 2024, Case no. T-792/22 –  WOXTER). In particular, the ruling deals with evidence submitted for the first time in the appeal stage and the provision of evidence through invoices.  

1. Background

The subject of the decision is the following EU trademark, registered in 2004:

With regard to this trade mark, a competitor filed an application for revocation under Art. 58 (1) (a) EUTMR on the grounds of non-use. The Cancellation Division of the EUIPO concluded that the evidence submitted by the trademark proprietor could not prove genuine use of the trademark and declared the trademark invalid for all registered Classes (cl. 9, 37 and 39). The Board of Appeal of the EUIPO annulled this decision to the extent that the mark  was declared invalid for "loudspeakers" in Class 9. In its judgment of February 7, 2024, the GC upheld the decision of the Board of Appeal: The evidence submitted would prove a continuous and geographically widespread use of the challenged mark during the relevant period for "loudspeakers".

2. Consideration of evidence submitted for the first time in the appeal instance

The GC first addresses the question of the consideration of evidence submitted for the first time in the appeal instance.

With reference to Art. 95 (2) of Regulation (EU) 2017/1001, the court first clarifies that the EUIPO does not have to take into account evidence which are not submitted in due time. However, this discretion granted to the EUIPO is limited by Art. 27 (4) of Commission Delegated Regulation (EU) 2018/625, according to which evidence must always be taken into account if it (i.) is, on the face of it, likely to be relevant for the outcome of the case and (ii.) is has not been produced in due time for valid reasons, in particular where it merely supplements relevant facts and evidence which had already been submitted in due time.  

In the present case, the evidence submitted for the first time at the appeal level did not meet these requirements: None of the evidence submitted was relevant to the outcome of the case. It was also incumbent upon the appellant (the presenting party) to explain why the evidence was relevant to the outcome of the case. There was no explanation in this regard.

Comment and practical advice: This view is in line with the previous case law of the GC (see GC, judgment of February 9, 2022, case no. T-520/19 - HEITEC). At the same time, this decision confirms once again that it is not sufficient to introduce the new evidence at second instance, but that it must also be explained why this evidence in particular is important for the outcome of the case and why its consideration would have led to a different outcome.

3. Invoices as evidence of genuine use

As a general rule, genuine use of a trademark must be assessed on the basis of all the circumstances and facts of the case that can prove the actual commercial use of the trademark. The proof of use must include information on the place, time, extent and duration of the use. According to Art. 10 (4) of Commission Delegated Regulation (EU) 2018/625, packages, labels, price lists, catalogues, photographs, newspaper advertisements, affidavits and invoices may be submitted as pieces of evidence.

In the decision under discussion, the GC addressed in particular the following four objections, which may arise repeatedly in connection with invoices as a piece of evidence.

First objection: A trademark is not used as a trademark in invoices, but at most as a company identifier.

This objection does not apply if a clear distinction can be made between the trademark on the one hand and the company or business name on the other hand.  The GC ruled that this could be assumed in the present case due to the visual design of the invoice. The trademark was placed on the top left coner of the header of each invoice, while the company name (in this case "Woxter Technology Co. Ldt.") was placed in the top right corner, followed by the address and contact information of the trademark owner.

Second objection: Invoices do not show that the mark is affixed to the goods themselves, and thus, do not indicate the commercial origin in accordance with its function.  

According to the GC, if it can be concluded from the visual design of the invoice that a sign does not identify the company (see above), then there is also a close connection between the challenged mark and the products invoiced. This is sufficient to prove use for the invoices “goods or services” within the meaning of Art. 58 of Regulation (EU) 2017/1001.

Third objection: Use of the mark on the invoice in a form different from that in which it is registered.

This is also irrelevant if the distinctive character of the mark is not affected (Art. 18(1)(2)(a)Regulation (EU) 2017/1001). The proprietor of a trademark must be able to make changes to the sign in the course of its commercial exploitation. In the present case, the disputed mark was displayed on the invoice in a different color from its registered form. The GC found this color change to be harmless.

Fourth objection: The sales volumes resulting from the invoices are too low to be able to assume genuine use.

In this context, the GC again clarified that it is not possible to set a priori thresholds for  determining whether the use of a trademark is genuine or not. Depending on the sector and industry, even minimal turnover figures may  be sufficient to prove genuine use.

Comment and practical advice: Thus, it remains the case that invoices, which allow significant conclusions to be drawn about the sales of the goods/services in question, are among the most important pieces of evidence when it comes to proving genuine use.  Any trademark owner who needs to prove genuine use of his trademark is therefore advised to submit invoices for the relevant period.