TVR Automotive Limited v OHIM and TVR Italia Srl discusses interesting principles around genuine use. TVR Italia filed an application to register a community trade mark in 2007. Muadib Beteiligung (MB), predecessor of TVR Automotive, filed a notice of opposition on the basis of confusing similarity, unfrair advantage/detriment and passing off. MB owned a CTM and a UK mark. MB was required to provide proof of genuine use. Following this, the Opposition Division then partially rejected this opposition. TVR Italia appealed the Opposition Division’s decision and filed for revocation proceedings on the basis of non-use. The Cancellation Division rejected the application for revocation on the grounds that MB had furnished proof of genuine use. TVR Italia appealed the Cancellation Division’s decision, but it was dismissed as it was out of time. However, the Board of Appeal dismissed the opposition on the grounds of non-use of MB’s earlier CTM. MB’s trade mark rights successor TVR Automotive appealed to the General Court (GC). The first question discussed was whether there was an infringement of Article 42(2) and 3 of the Regulations – the Board of Appeal rejected this opposition on the basis of non-use of the earlier CTM. However, the earlier UK mark was not in its non-use period. The GC held that the Board of Appeal was not entitled to conclude insufficient use of the earlier UK trade mark based on insufficient use of the earlier CTM, because there was no request for proof of use of the UK trade mark. Secondly, TVR Automotive argued that because the Cancellation Division had already decided that the owner of the earlier CTM registration had provided sufficient evidence of genuine use, the Board of Appeal could not decide otherwise on the basis of the principles of res judicata or non bis in idem and of the adage venire contra factum proprium. The GC disagreed – the proceedings before OHIM firstly are administrative and not judicial and the Regulations do not lay down such an effect. The GC noted that a revocation action and an opposition are different proceedings. Finally, after reviewing all of the evidence, the GC concluded that despite MB having financial difficulties during the relevant period of use, and despite their lack of actual sales, the evidence did demonstrate that MB had wanted to create and preserve an outlet for the goods and services in its CTM. As such, the GC found genuine use. This case serves as a useful reminder regarding some of the procedural aspects in bringing an action before the General Court and the types of evidence required in demonstrating genuine use of a trade mark when there has not been actual sales. It also shows that the Court is willing to look beyond ‘hard numbers’ to infer that a party intends to preserve a market share under their CTM.
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Trademarks / Automotive
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