Board of Appeal erred in assessing proof of use of CAMEL mark

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General Court: Board of Appeal erred in assessing proof of use of CAMEL mark

• The Board of Appeal of the EUIPO found that genuine use of the CAMEL mark had been proved for shirts, in particular in Spain, France and Italy
• The General Court found that the board had failed to examine a factor that was potentially relevant in the assessment of the evidence of use submitted in respect of Spain
• It could not be ruled out that an examination of the investigators’ report could have led the board to a different decision

'Proof of use was a key issue in a recent case before the General Court regarding a revocation action against the EU trademark CAMEL (Worldwide Brands Inc Zweigniederlassung Deutschland v EUIPO (Case T 552/21, 1 March 2023)).

Background

The word mark CAMEL was registered as an EU trademark for clothing and headgear in Class 25, the current proprietor being Mr Eric Guangyu Wan, Canada. In 2018, claiming that the CAMEL mark had not been put to genuine use in the European Union within a continuous period of five years, Worldwide Brands Inc, Germany, filed an application for revocation of the trademark registration.

The proprietor, Mr Wan, submitted evidence to the EUIPO in order to prove use of the CAMEL mark. However, the CancellationDivision of the EUIPO was not convinced and decided that the trademark CAMEL should be revoked for all the goods covered due to a lack of genuine use. Mr Wan appealed. Together with the statement of grounds for the appeal, additional items of evidence to show use of the mark were filed. The new evidence was accepted, as the Board of Appeal found that it was, primafacie, relevant for the outcome of the case and was supplementary to evidence already submitted before the CancellationDivision. The board also observed that there was nothing to suggest that Mr Wan had been negligent or used delaying tactics.
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The board partially annulled the Cancellation Division’s decision, accepting proof of genuine use of the trademark CAMEL for“shirts” in Class 25. The board found that genuine use had been proved in connection with shirts, in particular in Spain, Franceand Italy.

Worldwide Brands brought the matter before the General Court, claiming that the CAMEL mark should be revoked for all goods.

Decision

The General Court first considered whether the evidence submitted by Mr Wan for the first time before the Board of Appeal should be taken into account. This evidence included several hundred invoices issued between 2014 and 2018 to customers inSpain, France and Italy. The court found that those items of evidence were relevant for the outcome of the case and capable of validly supplementing the evidence which had already been submitted. Therefore, such evidence was admissible under Article27(4)(b) of Delegated Regulation 2018/625.

Regarding the substance, the invoices submitted were examined in detail, and partly accepted as relevant. Even though the invoices did not include the CAMEL mark next to the name of each of the goods listed, it was still possible to make a link between the CAMEL mark and all the goods listed in the invoices.

The invoices relating to Spain, however, were addressed to the same undertaking, Detecami SAU, which was part of the group of Mr Wan’s predecessor in law. The court found that there was no evidence that these invoices related to external sales of goods under the CAMEL mark. The court also pointed out that, before the Cancellation Division, Worldwide Brands had submitted an investigators’ report saying that Detecami did not sell goods under the trademark CAMEL. In response, Mr Wanhad submitted an additional exhibit that called the investigators’ report into question. However, the Board of Appeal had not stated anywhere in its decision whether and how it had taken the investigators’ report into account.

The court found that the Board of Appeal had failed to examine a factor that was potentially relevant in the global assessment of the evidence of use submitted in respect of Spain - namely, a total of 42 invoices addressed to Detecami.

As it could not be ruled out that an examination of the investigators’ report could have led the Board of Appeal to a different decision, the court annulled the board’s decision insofar as it maintained the registration of the CAMEL trademark in respect of“shirts”.

Comment

It will be interesting to see whether the case continues in view of the missing examination of the investigators’ report.

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