Lidl filed a Community Trade Mark application for the following mark for various foodstuffs in Classes 29 and 30:
A Colmeia opposed, claiming a likelihood of confusion Under Article 8(1)(b) of the Community Trade Mark Regulation based, inter alia, on its earlier national registrations in Portugal for the mark GLOBO, also covering goods in Classes 29 and 30.
Since these earlier registrations were more than five years old, Lidl requested that A Colmeia submit proof of genuine use. The only evidence supplied by A Colmeia was a set of six invoices.
The Opposition Division and then the Board of Appeal upheld the opposition in part as it was found that the six invoices referencing the mark GLOBO demonstrated that the mark had been put to genuine use for some of the goods registered and there was a likelihood of confusion between the marks at issue. Lidl appealed.
A mark is put to genuine, as opposed to token use, when it is used in accordance with its essential function to guarantee the origin of the goods, in order to create or preserve an outlet for those goods. There is no minimum use threshold and the circumstance of the particular case must be assessed so that, for example, low intensity of sales may be offset by high volume or vice versa or the characteristics of the goods on the market may be a relevant factor. However, the smaller the volume of sales, the more necessary it is to adduce additional evidence to dispel doubts as to the genuineness of the use.
OHIM's argument that the six invoices were sufficient, as they were illustrative of sales, was rejected as it was found that the sales figures were very low. The intensity of use could not be presumed so the possibility that use was merely token could not be ruled out.
The small volume of sales could not be offset by other factors because the six invoices did not conclusively prove a high intensity or constancy of use over time. Furthermore, since the goods in question were moderately priced food products expected to be sold to large numbers of consumers throughout Portugal, the nature of the goods could not explain the low volume of sales.
It was found that A Colmeia had the opportunity and means to easily supply further evidence of use such as brochures or advertising materials and such evidence was necessary in view of the small volume of sales indicated by the invoices.
Since no further evidence had been provided by A Colmeia, the six invoices alone did not permit the conclusion that there was proof of sufficient use for the goods in question and the opposition was rejected.
This case highlights the importance of keeping good records of materials showing use of a trade mark. It also shows that an opposition can easily fail when an opponent underestimates the extent of evidence required so it is always worth requesting proof of use even where an applicant suspects that the mark has been used.