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A heavy evidential burden

May 04, 2021 - case_law_comment
A heavy evidential burden

A heavy evidential burden

The General Court underlines the stringent requirements to prove that a sign falls foul of Article 7(1)(d) EUTMR
17/03/2021, T‑878/19, K‑9, EU:T:2021:146

Stefan Martin, Member of the Second Board of Appeal; Jonathan Boyd, EUIPO Trainee

This article reflects the views and opinions of the authors, and not the position of the EUIPO.

Article 7 EUTMR provides that:

  1. The following shall not be registered:

    (d)     trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.

Objectives and scope of Article 7(1)(d) EUTMR

The purpose of Article 7(1)(d) EUTMR is to prevent the registration of signs or indications that are not capable of distinguishing the goods or services of one undertaking from those of other undertakings and so do not satisfy the essential function of a trade mark (§ 19). This provision sets a high qualitative and quantitative threshold (§ 50). Whether a mark is customary must be assessed by reference to the goods or services in respect of which registration is sought, even though the provision in question does not explicitly refer to those goods or services, and, also on the basis of the relevant public’s perception of the mark (§ 20). Article 7(1)(d) EUTMR requires actual, ‘established’ use of the term in trade (01/10/2019, R 560/2018‑2, K‑9, § 37). Article 7(1)(d) EUTMR applies not only to words but also to acronyms (23/10/2007, T‑405/04, Caipi, EU:T:2007:315, § 33, 45). The assessment must be conducted on the basis of the mark as a whole and not on the basis of its individual elements (24/08/2008, T‑248/05, I.T.@MANPOWER, EU:T:2008:396, § 62).

Burden and means of proof

In invalidity proceedings, it follows from the provisions of Articles 59 and 62 EUTMR that the registered trade mark is presumed to be valid. As a result, the burden of proof lies with the invalidity applicant, who must prove the specific facts that call into question the validity of that trade mark (§ 21). Such demonstration cannot be limited to isolated cases or sporadic examples (§ 50). Documents originating from outside the EU may be relevant if they are capable of proving circumstances that have a bearing on the perception of the sign by the relevant public of the EU (§ 33-35).

In the present case, the General Court notes that the invalidity applicant has failed to prove that the documents and publications emanating from the United States have been released or distributed in the EU, or consulted by a substantial part of the relevant public (§ 35). Moreover, since the existence of this absolute ground must be assessed at the time of the application for registration of the mark (§ 43), documents issued in 2016 and 2017 are not relevant to the situation that existed at the date of filing in 2013. Undated documents may be taken into account provided that they are used to corroborate facts disclosed by other documents that bear a date (§ 45).

The mark must designate the goods or services

The invalidity applicant alleged that the sign ‘K‑9’ has become customary in the EU, since it designates ‘military and police dog-units’ following its use as such in the USA in the second half of the 20th century. The General Court concludes that the invalidity applicant did not establish, as required by Article 59(1)(a) EUTMR, that the contested mark had become customary in the current language or in the bona fide and established practices of the trade to designate the goods, such as harnesses, leather leads, footwear, clothing and headgear and sporting articles in Classes 18, 25 and 28 (§ 50). The fact that an undertaking providing services related to the training and commercialisation of dogs intended to assist the work of police and army forces uses the term ‘K‑9’ in its company name does not mean either that that undertaking uses the term ‘K‑9’ as a generic and usual term to designate the goods and services which it provides or, a fortiori, that that term has become customary in the bona fide and established practices of the trade to designate those goods and services (§ 38-39). The relevant public must perceive the sign as the designation of the goods or services, and not as trade mark (§ 38). Article 7(1)(d) EUTMR is not applicable when the sign’s use on the market is made by only one trader (other than the EUTM applicant or proprietor) (07/06/2011, T‑507/08, 16PF, EU:T:2011:253).

Practical implications

The decision confirms an important line of judgments that rejected invalidity requests on the basis that they lacked convincing or relevant evidence. Applications solely based on an extract from the collective encyclopaedia Wikipedia, a reference to a scientific publication, a few links to websites accessible in the EU, an entry in a dictionary, a Google search, the views of persons employed by an undertaking involved in the relevant activities, and an article published in a scientific journal have all failed. The case-law is consistent in that the standard of proof expected in Article 7(1)(d) cases is high. As such, substantial evidence from multiple, diverse sources should be submitted to support such a claim. Expert testimony from a qualified linguist or results from a representative survey of the relevant public would likely be persuasive.

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