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Gordon Humphreys, Proof of use, continuity of functions in inter partes proceedings, and three-dimensional marks: Europe in review , Journal of Intellectual Property Law & Practice, Volume 2, Issue 4, APRIL 2007, Pages 240–250, https://doi.org/10.1093/jiplp/jpm008
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Abstract
This article reviews the recent CFI and ECJ case law on proof of use and continuity of functions in the context of opposition proceedings as well as the strict approach to three-dimensional marks.
Unlike the situation in many common law jurisdictions, the Community trade mark regime is not a use-based system. Nevertheless, once a mark has been registered for more than five years, the rights that it seeks to protect may only be enforceable to the extent that the sign has been used for the goods and services it covers. In the context of opposition proceedings, applicants may call for evidence that the opponent has actually used the mark on which the opposition is based. The concept of ‘genuine use’ - which must be demonstrated in order to show that a mark has actually been used - has come before the Court of Justice for further clarification. Where proof of use is adduced for the first time before the Board of Appeal, the Court of First Instance believes that, because of the principle of the continuity of functions, it is not out of time. That analysis has not been supported by the recent opinion of Advocate General Sharpston in the Arcol case and there is now considerable uncertainty pending a final pronouncement on the issue by the Court of Justice. In the meantime, the case law from Luxembourg continues to insist on three dimensional marks being like any other type of mark, whilst taking a very strict approach to the registrability of such signs.
The evidence of use to be adduced need not be quantatively significant and the ‘hurdle to be jumped’ is somewhat ‘lower’ than was previously the case. Whether negligent representatives may continue to use the continuity of functions principle to justify recouping missed deadlines on appeal (particularly, when presenting proof of use), remains to be seen. However, what is certain is that three-dimensional marks will continue to be difficult to register.
