Nanu-Nana v OHIM: evidence of genuine use

The invalidation action was based upon an earlier German registration for NANA and, as part of the proceedings, Lina requested that Nanu-Nana prove use of its earlier mark.

Evidence of genuine use

We have referred to the criteria that should be taken into account when considering the merits of evidence to show genuine use in opposition proceedings in previous newsletters (see useful links at the end of this article) and the GC made reference to these again, as follows:

1. The evidence must address the place, time, extent and nature of the use.
2. The evidence should show use in accordance with the essential function of the trade mark, so that the trade mark signifies origin.
3. The use may not be merely token.
4. An overall assessment should be undertaken, bearing in mind all relevant factors (it may be that genuine use is shown through various pieces of evidence considered together which, individually, would not demonstrate genuine use).

In this case, the court emphasized that, when considering the extent of use made of an earlier trade mark, it is necessary to consider not only the volume but also the length and the frequency of use. Photographs of products can be of assistance in proving use, but undated photographs can only really show the nature of use and do not establish place, time or extent of use and so have little evidential value without accompanying information and other documentation.

The case also highlighted that it is not sufficient to refer to volume or value of sales of goods by general reference to the class in which the goods fall; evidence must be more specific and refer to the actual type of goods.

The court confirmed that affidavits setting out details of use are acceptable but affidavits in the name of the party concerned or a related party are not so valuable as evidence prepared in the name of an independent third party. The court went as far as to say that statements from the party concerned (or a related party) cannot "on their own, constitute sufficient proof of use of the mark" and this is a significant factor to bear in mind to ensure that any ground of opposition or invalidation based upon older registered rights is sustained.

Cases addressing proof of use are typically both cautionary and valuable and we shall continue to keep you advised when relevant UK or Community decisions are issued.

Useful link

Nanu-Nana Joachim Hoep GmbH & Co KG v OHIM (in the name of Lina M. Stal-Florez Botero) full decision: http://dycip.com/nanu-nana