A very interesting decision has been ruled by the Boards of Appeal of the OHIM. Interesting because this Board gives it opinion about the admissibility of new evidence and the scope of genuine use.
The opposition against a trademark SPORTNEX was filed by Goodyear Dunlop with their trademark SPORTMAX as a basis. The use requirements applied on this trademark and the counterparty asked for proof of use. The OHIM dismissed the evidence (and the opposition). Goodyear Dunlop filed an appeal and submitted further evidence.
The first question was whether this fresh evidence could be allowed. According tho case law and law, it is to the discretion of the Board of Appeal to allow evidence, while in making such determinations there is an obvious need to be fair to both parties. One of the consequences is that a decision must be motivated on this point. In this respect the evidence was filed during the Appeal procedure and is found to be merely an elaboration of earlier filed evidence. Therefore, the evidence has been allowed.
The second question was whether the evidence was sufficient in order to proof genuine use. Goodyear Dunlop filed evidence of the presence of their trademarks in three countries. With he Onel-decision in mind, one can say that this is an extensive area. However, the Board of Appeal was far for impressed about the nature and extent of the use. Therefore, despite of the geographical extent, the evidence was not sufficient to proof use.
While we already know after the Onel-ruling that OHIM takes the view that intensive use of an European trademark in one country is sufficient (in most circumstances), crossing borders will not save your trademark on the other hand in every circumstance. Assessing use remains a collaboration of the 4 elements including the extent, time and nature of use.
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