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case summary: Recaro Holding GmbH v OHIM

7 January 2014

Genuine use by an Intermediary

Recaro Holding GmbH appealed against a decision of the First Board of Appeal of OHIM upholding the validity of the word mark RECARO in class 25 (footwear (except orthopaedic)) following revocation proceedings bought by Recaro.

In 2009, Recaro filed an application for revocation of the mark RECARO, registered in class 10 (orthopaedic footwear) and class 25 (footwear (except orthopaedic)). The application was made pursuant to Article 51(1)(a) of the CTM Regulation that the mark had not, within a continuous period of 5 years, been put to "genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use".

At 1st instance the Cancellation Division held that the mark had not been put to genuine use and revoked the mark in its entirety. On appeal by the proprietor of the mark the Board of Appeal overturned that decision and upheld the validity of the mark in Class 25 but dismissed the action in respect of class 10.

The Decision

Recaro put forward 3 pleas in support of their appeal. Recaro submitted (i) there had been no genuine use of the mark pursuant to Article 51(1)(a) of the CTM Regulation (ii) the Board of Appeal under the CTM Regulation did not have the ability to allow evidence adduced by the proprietor for the first time at appeal stage and (iii) had not stated reasons when exercising that discretion.

In support of its plea that there had been no genuine use of the mark, the applicant submitted five complaints, concerning:

• The lack of proof of outward use aimed at end consumers; • Use of the mark as a mark and in connection with the goods for which it is registered; • Use of the mark at issue in its registered form; • Extent of use; and • Evidence adduced at appeal stage.

Applying the CTM Regulation and the relevant case law, the court found the complaints submitted by the application to be unfounded and ineffective and dismissed the appeal in respect of all 3 pleas.

Genuine Use by an Intermediary

In relation to the first complaint, the General Court applied Sunrider v OHIM - Espadafor Caba (T-203/02) that genuine use of a mark requires it to be used publically and outwardly . The court confirmed that "genuine use of the mark relates to the market on which the proprietor of the Community mark pursues its commercial activities and on which it hopes to put the mark to use." However, the Court held that such outward use does not necessarily mean aimed only at end consumers, but also "specialists, industrial clients and other professional users".

In the present case the proprietor of the mark was an intermediary between producers and professional purchasers (including some distributors) and was not only able to adduce evidence of the marks use at trade fairs aimed at the sorts of industry professionals referred to above, but also that it had entered into a licensing contract demonstrating that the goods sold under the mark were ultimately intended for sale to end consumers. For both of these reasons then, the fact that the proprietor of the CTM did not itself engage directly with end consumers was "of no import".

This decision is clearly right. The fact that the CTM proprietor had entered into a distribution agreement, the purpose of which was to distribute the goods to end users, would on its own usually be enough to demonstrate that there was sufficient genuine use. However, in this case, the Court has made plain that where a trade mark proprietor is an intermediary whose activities "consist in identifying professional purchasers" the relevant public to whom the marks are addressed is broader than merely the literal ultimate "end user" of the goods.

This article was first published in the ITMA Review

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