Journal Article

Proof of use, continuity of functions in <i>inter partes</i> proceedings, and three-dimensional marks: Europe in review

Gordon Humphreys

in Journal of Intellectual Property Law & Practice

Volume 2, issue 4, pages 240-250
Published in print April 2007 | ISSN: 1747-1532
Published online March 2007 | e-ISSN: 1747-1540 | DOI:
Proof of use, continuity of functions in inter partes proceedings, and three-dimensional marks: Europe in review

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Legal context

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.

Key points

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.

Practical significance

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.

Keywords: The process of maturation of European trade mark law has now gone well beyond the legislative phase and has reached the point at which the true effect of the Community's consensual law-making is being established by judicial process.; Among the areas of particular concern to trade mark practitioners, three have attracted substantial litigation in the recent past: proof of use of a mark, the principle of ‘continuity of functions’ that has come to shape the role of the Boards of Appeal of the Office for Harmonization in the Internal Market, and the determination of distinctive character in signs consisting of shapes and packaging of goods.; These three areas are analysed with reference to recent case law, casting a critical shadow over the consequences of some of the more controversial judicial decisions.

Journal Article.  8430 words. 

Subjects: Intellectual Property Law

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