Burden of proof of genuine trade mark use rests on trade mark proprietor. No obligation for market research by applicant for revocation
26-01-2023 Print this pageCase C-183/21. Maxxus v Globus. Request for preliminary ruling Landgericht Saarbrücken.
Burden of proof for genuine use within the meaning of Article 19 Directive (EU) 2015/2436 Trade Marks Directive 2015 rests on the trade mark proprietor. Burden of proof does not constitute a procedural provision within the competence of the Member States. The same legal protection in all Member States is fundamental. Article 19 Trade Marks Directive 2015 precludes a procedural rule of a Member State according to which, in revocation proceedings for non-use of a trade mark, the applicant is required to carry out a market research on the possible use of that trade mark by the proprietor and to substantiated submissions in support of its application.
Globus is the proprietor of the word mark MAXUS. That mark was registered in July 1996 at the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office, Germany) for a number of goods in Classes 1 to 9 and 11 to 34 and Globus is the proprietor of the Globus figurative mark, registered at the German Patent and Trade Mark Office in May 1996 for goods in Classes 1 to 9 and 11 to 34:
On 28 November 2019, Maxxus brought before the Landgericht Saarbrücken (Regional Court, Saarbrücken, Germany), which is the referring court, an action seeking, in essence, a declaration revoking Globus’s trade marks referred to in paragraphs 13 and 14 of the present judgment on the ground of non-use.
Maxxus states that is has searched online, including on Globus’s website, and that these searches did not provided an indication of such use. A search for the word Maxus on Globus' own website returned two results, both linked to a beverage shop in which refer to a beverage store in Freilassing (Germany) operated by a company linked to Globus. A search on the internet revealed that the beverages sold by that company do not bear the brand name Maxus. This has been confirmed by a detective agency who conducted an investigation in the shop.
Since Directive 2015/2436 does not govern the national procedure relating to an application for revocation of a trade mark for non-use, the referring court takes the view that the judgment of 22 October 2020, Ferrari (C 720/18 and C 721/18, EU:C:2020:854), does not preclude the applicant from bearing a burden of setting out the facts as contemplated by that court.
Landgericht Saarbrücken (Regional Court, Saarbrücken) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling (The Court gives in consideration that the referring court's question in essence seeks to learn:)
"whether Article 19 of Directive 2015/2436 must be interpreted as precluding a procedural rule of a Member State which, in proceedings concerning an application for revocation of a trade mark for non-use, requires the applicant to carry out market research concerning the possible use of that mark by its proprietor and to make in that regard, to the extent possible, substantiated submissions in support of its application."
The CJEU emphasizes that in this connection, it should be pointed out that the question of the burden of proof in respect of genuine use, within the meaning of Article 19(1) of Directive 2015/2436, in the context of proceedings relating to revocation of a trade mark for non-use does not constitute a procedural provision falling within the competence of the Member States (see, by analogy, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 76 and the case-law cited).
If it was a matter for the national law of the Member States, the consequence for proprietors of trade marks could be that protection would vary according to the legal system concerned, with the result that the objective of ‘the same protection under the legal systems of all the Member States’ set out in recital 10 of Directive 2015/2436, where it is described as ‘fundamental’, would not be attained (see, by analogy, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 77 and the case-law cited).
In reality it is merely an application of common sense and of a basic requirement of procedural efficacy that it is the proprietor of the mark at issue which is in the best position to adduce evidence in support of the assertion that its mark has been put to genuine use, see also Ferrari.
On those grounds, the Court (Tenth Chamber) hereby rules:
Article 19 of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks must be interpreted as precluding a procedural rule of a Member State which, in proceedings concerning an application for revocation of a trade mark for non-use, requires the applicant to carry out market research concerning the possible use of that mark by its proprietor and to make in that regard, to the extent possible, substantiated submissions in support of its application.
IPPT20220310, CJEU, Maxxus v Globus
