OHIM may decide cancellation action on own evidence

C-445/13 P

Voss of Norway v OHIM

Trade marks: Validity

07 May 2015

The matter at hand

Upon application by Voss of Norway, the OHIM registered a three-dimensional mark for the shape of a bottle for various beverages. Nordic Spirit subsequently filed a cancellation action against this mark, arguing that this mark was devoid of distinctive character. Nordic Spirit was successful in its action, both before the Board of Appeal before the General Court. Both had inter alia come to the conclusion that the bottle at issue did not depart significantly from the norms and customs of the relevant sector. Voss of Norway appealed this decision before the ECJ.

The judgment of the ECJ

Voss of Norway argued that Nordic Spirit, being the party that invoked the invalidity of the contested trade mark, had the onus of proof. On grounds thereof, Voss of Norway inter alia argued that the General Court erred in law by not examining its argument that the Board of Appeal unduly imposed on it the burden of proving the distinctive character of its mark. The ECJ however rejects this ground of appeal as unfounded as it considers that “the Board of Appeal […] carried out an independent analysis of the distinctive character of the contested trade mark and did not impose the burden of proving the existence of such distinctiveness on Voss.” (paragraph 58).

Commentary

In Oberbank and Others (C-217/13), the ECJ concludes that the burden of proof on acquired distinctiveness must be borne by the proprietor of the mark, also in an invalidation action. The reasoning used for that conclusion does however not apply to intrinsic distinctive character. Hence, the question of who bears the burden of proof in that regard remains unanswered by the ECJ. The present case does not change this, as the ECJ apparently concludes that the OHIM itself had gathered sufficient factual basis for its conclusion.

Although evidence gathering by the OHIM in a cancellation may be perceived by the trade mark proprietor as a stab in the back from the OHIM (who accepted the mark on absolute grounds at first), it is a consequence of the administrative nature of trade mark bureaus. This may in fact be something to take into account when a choice must be made between claiming invalidity as a counter claim in court proceedings, or initiating an invalidation action before a trade marks bureau: whereas a court will only assess facts raised by the parties, a bureau may assist the party invoking the invalidity in gathering evidence.