The Case
Turkish company Gürok Turizm ve Madencilik AŞ (“Gürok”) has held figurative mark no.011224821 
in classes 8, 11, 19, 21, 35, 37 and 39 since 2013.
German company Olav GmbH (“Olav”) filed an application for revocation on grounds of non-use to the EUIPO.
The Court History
Gürok provided evidence to the contrary – a considerable paper trail, including invoices going back to 2013 – to the EUIPO. While the EUIPO’s Cancellation Division revoked protection for most goods and services, they did find this sufficient as evidence of use in table- and glassware products, under class 21.
Olav took its case to the Board of Appeal. The BoA found that the evidence did not reach the probative standard needed to demonstrate the extent of use, noting that the explanation and referencing supplied by Gürok was not sufficient to find the evidence robust, objective and sufficient.
The BoA also found that:
Gürok appealed in turn to the General Court. In the proceedings before the General Court, the EUIPO decided to largely support the appeal and endorse the annulment of the decision.
Outcomes
The General Court found in favour of Gürok, annulling the BoA’s decision.
The Court determined that the BoA had placed an excessive burden on Gürok to provide evidence, in line with Articles 18(1), 58(1)(a) of the EU trade mark Regulations 2017/1001 and Article 41 of the Charter of Fundamental Rights. The Court instead emphasised the holistic assessment of “use” in terms of place, extent, time and nature. It deemed that this could be assessed as a whole, noting that it is not necessary for each individual item to prove the extent of use, but that a culmination of those items of evidence was sufficient to do so.
Furthermore, the General Court criticised inconsistencies in the BoA’s decision. In particular, the BoA had accepted 902 pages of invoices and other documents as evidence from Gürok, complete with product codes and references to the mark. However, it later claimed these lacked probative “quality”, due to a lack of proof of place, demanding a cross-check of the 2,919 lines of invoices presented in the case. However, the BoA had not sought any additional information or explanation, so it was not entitled to accuse Gürok of any intentional failure to provide evidence or facts.
The Court suggested this represented an unreasonable burden of proof for the applicant. It also rejected any requirement on the part of Gürok to prove end sales of the products in question direct to end customers, as external use also covers sales to third party distributors and licensed sellers.
Comment
The back-and-forth in this case principally concerns the weight of evidence and the perceived quality thereof presented by Gürok for its use of the mark.
Ultimately, the decision by the BoA might be construed as too strict. It is not necessary to cross-reference every piece of evidence, line by line. Instead, a sufficient amount of evidence should be provided and cross-referenced to present an accurate picture of the body of the evidence as a whole in order to dispel any doubts about the extent of use.
It is also noteworthy that the Court deemed that the fact that the goods were offered for sale for a longer time than the relevant period strengthened the arguments in favour of the extent of use. The interdependence of the various factors of use (place, time, nature and extent) and of the pieces of evidence is not new. Indeed, it is settled case law that each case must be assessed individually and comprehensively, taking into account all its circumstances. However, the GCEU is seemingly moving a step further, effectively blurring the separation of the factors that are relevant for the proof of use.
To discuss any aspect of this ruling and its potential impact on your portfolio, please contact your regular Boult trade mark representative.
