• ALICANTE ABSTRACTS

    First OHIM Non-Use Revocation Decided

    In 17 May, OHIM’s Cancellation Division issued its first decision on an application to revoke a CTM registration for non-use under Article 50 (1) (a) of the CTM Regulation.

    Under Article 50 (1) (a), a CTM registration shall be revoked if, within a continuous period of 5 years, the CTM has not been put to genuine use in the Community by the proprietor or with its consent in respect of the registered goods or services, and there are no proper reasons for the non-use.

    In Case 686C, The Welding Institute applied to cancel CTM registration 405555 for BARRICADE of Stockhauser GmbH & Co. KG for “fireproofing preparations” in Class 1. The applicant for revocation pointed to investigations which had unearthed no evidence that the mark had been used in the Community in the relevant period.

    The CTM proprietor did not respond and was in default. Finding no evidence of use, the Cancellation Division ordered cancellation of the CTM.

     

    Comment

    Importantly, the Cancellation Division held that the burden of proof in non-use revocation actions is on the CTM holder, since the applicant for revocation cannot be expected to prove a negative.

    This was the result most had dared to hope for, but by no means expected with certainty. Placing the burden of proof on the CTM owner is a reversal of the ordinary burden, and it was unclear just how far the Cancellation Division would be prepared to go amidst acecdotal murmurrings that it wanted to discourage widespread “nuisance” actions for non-use revocation. In the end, the Cancellation Division went so far as to decide, rightly in our view, that the burden of proving use is on CTM owners, who are in the best position to show whether and for what goods or services a mark has been used in the Community during the relevant period. It would nevertheless be wise, however, to include in a revocation application any available evidence tending to suggest non-use, such as investigation reports, until the position is ultimately affirmed by the CFI.

    Many issues such as what scale of use constitutes use in the Community remain yet to be resolved, and it is hoped that the Cancellation Division will have the opportunity to consider these issues too in the near future.