Hard luck for Storck
A partial victory provides a useful precedent, writes Robecca Davey. T-367/14, August Storck KG v EUIPO and Chiquita Brands LLC (Fruitfuls), CJEU, 18th October 2016.
T-367/14, August Storck KG v EUIPO and Chiquita Brands LLC (Fruitfuls), CJEU, 18th October 2016
Key points
- The GC decided that any proof of genuine use for “hard fruit candies” covered the entire category of “confectionery”
- “Genuine use” does not have to cover an extensive geographic area and may not be compared to the entire EU market
The General Court (GC) had to consider whether EUIPO’s Fifth Board of Appeal (BoA) had erred in upholding a revocation for non-use brought by Chiquita Brands LLC against confectionery manufacturer August Storck KG’s EU trade mark for FRUITFULS. Storck’s registration covered “confectionery, chocolate and chocolate goods, [and] pastry” in class 30, but evidence of genuine use was only submitted in relation to hard fruit candies.
EUIPO appeal
The BoA had rejected Storck’s appeal, finding that there had been no genuine use of the FRUITFULS mark, as there was only one occasion of use during the five-year period in which goods were produced in Storck’s factory in Germany. This was insufficient evidence of the extent of the use of the contested mark in the European confectionery market. The BoA further stated that:
- The invoices provided as evidence showed only insignificant individual quantities of goods and were from the end of the relevant period.
- There was no evidence to offset the low sales.
- The sales concerned only a limited territory (ie Slovenia) and a low volume of sales over a brief time span; this was found to be quantitatively insufficient for the whole of the EU.
- There was nothing (eg legal or other obstacles) to prevent the goods from being sold.
- There was no evidence to support that there were sales in other countries.
GC appeal
In its appeal, Storck argued that there was no obligation to demonstrate genuine use across the entire five-year period. Further, Storck stressed that it was wrong to compare the sales made to the volume of sales in the entire confectionery market in the EU.
The GC agreed that the BoA was wrong to compare Storck’s sales of hard fruit candies in one country with the market volume of confectionery in the entire EU, leading to a conclusion that Storck’s volume of sales was very low. The Judges assessed whether “hard fruit candies” constituted a subcategory of confectionery and decided that it did not. To establish a subcategory, the purpose and intended use of the hard fruit candies must be shown to be different to that of confectionery.
Here, the purpose and intended use was found to be the same. Citing precedents in VITAKRAFT and CPI COPISA INDUSTRIAL , the Court found that Storck could not be expected to provide evidence for the entire category of goods, and any proof of genuine use would cover the whole category.
It also held that there was no justification for the BoA to compare sales in Slovenia with those in the entire EU. The GC thus partially annulled the BoA’s decision in relation to “confectionery”, but confirmed that Storck’s trade mark was correctly revoked with regard to “chocolate and chocolate products, [and] pastry”.
Useful analysis
This case provides a useful analysis of the requirements of genuine use – in particular because it considers what market (in terms of both categories of goods/services and geographical extent) should be considered in determining “genuine use”. It is interesting that the GC decided that any proof of genuine use for “hard fruit candies” would cover the entire category of “confectionery”. In terms of the geographical extent, this case shows that the use does not have to cover an extensive geographic area in order to constitute genuine use.
Robecca Davey is a part-qualified Trade Mark Attorney at Baker McKenzie LLP
Robecca works on national, EU and international trade mark matters for a wide range of clients.