Proof of use proves problematic
Jessica Guest explains why e-actions might have been beneficial
R 2142/2018-G, DIESEL SPORT (Opposition), EUIPO, 28th June 2021
On 18th May 2017, Wolfgang Diesel (the Applicant) filed an EU trade mark application for the stylised mark DIESEL SPORT, BEAT YOUR LIMITS covering, inter alia, sports equipment and clothing.
Diesel S.p.A. (the Opponent) filed an opposition based on likelihood of confusion with various earlier registrations for the word mark DIESEL under Article 8(1)(b) EUTMR.
During the course of the opposition proceedings, the Applicant submitted two requests for proof of use of the earlier marks relied on to oppose, both of which were found to be inadmissible. The EUIPO subsequently upheld the opposition in relation to goods in classes 21, 25 and 28. The Applicant appealed this decision.
The case was referred to the Grand Board of Appeal, which found there was a need to clarify practice on proof of use requests and invited the Executive Director of the EUIPO to comment. These comments offer useful guidance on acceptable proof of use requests, as well as the benefits of using “e-actions” via the EUIPO’s online User Area.
Failed requests
On 14th March 2018, the Applicant submitted observations in reply to the opposition, alongside a request for proof of use of the earlier marks relied upon.
The request was found to be inadmissible, as it did not meet the “separate document” requirement under Article 10(1) EUTMDR.
On 27th April 2018, the Applicant filed a second proof of use request, presented in a separate document, which the EUIPO also dismissed because it came after the expiry of the deadline to request proof of use.
The Applicant submitted the initial proof of use request in a single electronic document named “Request; Observations.pdf”.
On appeal, it argued that the request was presented on a separate sheet of the document, making it compliant with Article 10(1) EUTMDR. The Grand Board of Appeal rejected this argument, finding that the request had been merged into the Applicant’s observations.
In particular, it noted the continuous page numbering of the document – as did the Executive Director – and concluded that the proof of use request did not satisfy the separate document requirement.
In clarifying the requirements under Article 10(1) EUTMDR, the Executive Director highlighted that the need for a separate document does not mandate a separate electronic file attachment (or hard copy equivalent).
Rather, the request for proof of use must be clearly presented on a standalone basis and not merged into the Applicant’s observations. A request annexed to the Applicant’s observations in the same electronic file, for example, can be considered a separate document provided it is clearly and correctly identified.
The comments of the Executive Director outline in more detail various acceptable formats for proof of use requests, along with signature requirements. Among these options, the Executive Director highlighted the benefits of the dedicated “Request proof of use” e-action.
Although it is not compulsory to submit a proof of use request using this online function, doing so will automatically guarantee compliance with the requirements of Article 10(1) EUTMDR.
The Executive Director noted that this is likely to become the primary method for requesting proof of use in the very near future, particularly following the removal of fax as a means of communication with the EUIPO on 1st March 2021.
After finding that the first proof of use request did not satisfy the requirements of Article 10(1) EUTMDR, the Grand Board of Appeal went on to confirm that the Applicant’s second request was belated and could not be taken into account.
The Executive Director noted that, rather than submitting this second request outside of the relevant time limit, the Applicant would have been better advised to apply for a continuation of proceedings under Article 105(1), as continuation would generally be granted in these circumstances.
Likelihood of confusion
Having dismissed the Applicant’s requests for proof of use, the Grand Board of Appeal next considered the opposition on its merits, including an interesting discussion of the similarity of the class 21 goods at issue.
Both the Opposition Division and the Grand Board of Appeal accepted that the Applicant’s goods in this class had been wrongly translated from German (the language of the application) into English as “hip flasks” instead of “drinking bottles for sporting activities”.
As German is an official language of the EU, the original German text was found to be decisive.
It was therefore “drinking bottles for sporting activities” that were to be compared against the Opponent’s class 21 goods, namely, various household goods including “glassware”.
The Applicant argued on appeal that these goods are dissimilar because drinking bottles for sporting activities are never made of glass for safety reasons.
In reply, the Opponent provided examples gathered from an Amazon search of glass drinking bottles for sporting activities. The Grand Board of Appeal found these examples persuasive and upheld the previous finding of identity between the class 21 goods.
This acts as a useful reminder that factual evidence can play an important role in the comparison of goods and services.
The Grand Board of Appeal also confirmed the contested decision’s remaining findings on similarity and concluded that the Applicant’s mark had been correctly refused on the grounds of Article 8(1)(b) EUTMR in respect of the goods under appeal in classes 21, 25 and 28.
This decision, and in particular the comments of the Executive Director, can act as a helpful reference point on the configuration of acceptable proof of use requests.
It also offers a warning on the potential pitfalls involved in requesting proof of use, many of which can be avoided by using the dedicated e-action available to EUIPO online users.
Key points
- Using dedicated e-actions via the EUIPO User Area automatically guarantees compliance with formal requirements
- If a proof of use request is refused, the applicant should apply for a continuation of proceedings rather than submitting a corrected request outside of the relevant time limit
