Proof of use should be timely and clear – case law review T-41/12 LS Fashion, LLC v OHIM 

This case concerns an opposition filed by Sucesores de Miguel Herreros, SA (the Opponent), the predecessor in title to the Intervener, Gestión de Activos Isorana, SL (Isorana) on the basis of Article 8(1)(b) Council Regulation (EC) No 207/2009 (CTMR), claiming a likelihood of confusion with its earlier Spanish trade mark registration for LOREN SCOTT, covering “clothes for ladies, men and children, included [sic] boots, shoes and slippers” in class 25.

The opposition was directed against Community Trade Mark (CTM) application No. 005190368 for L’Wren Scott, filed by L’Wren Scott in her own personal name and subsequently assigned to LS Fashion, LLC (the Applicant), covering goods in class 25.  Within administrative proceedings, the Applicant requested of OHIM that the Opponent furnish proof of use of its earlier mark, which it duly did. Both the OHIM Opposition Division and Fourth Board of Appeal of OHIM (BoA) upheld the opposition, having found that the evidence submitted by Isorana of the earlier mark proved sufficiently that genuine use had been made of that mark.

Furthermore, the BoA held that the goods in question were identical or similar and that the signs at issue had an average degree of visual and a likelihood of confusion. On 24 November 2011, the Applicant brought an action against the BoA’s decision to uphold the opposition. In support of the action the Applicant made two pleas: first, that the BoA was wrong to find that the evidence submitted by Isorana constituted genuine use of the earlier mark; and second, that the BoA failed to consider the inherent distinctiveness of the mark L’Wren Scott, resulting in the incorrect conclusion that similarity of the marks at issue resulted in a likelihood of confusion.

In support of its second plea, the Applicant submitted new evidence intended to prove that the mark L’Wren Scott was well known in Spain prior to the filing date of its CTM application. In doing so, it intended to prove that L’Wren Scott was conceptually dissimilar from Isorana’s earlier mark, rendering the marks dissimilar and disproving the BoA’s finding of likelihood of confusion.

Evidence dismissed

As it is not the Court’s function to re-evaluate the factual circumstances in light of new evidence that has been adduced before it for the first time, the Court declared the Applicant’s new evidence to be inadmissible and carried out its review of the legality of the BoA’s decision based on the evidence disclosed during the administrative proceedings.

First plea

To prove that its earlier mark had been put to genuine use in Spain during the five years preceding the date of publication of the application against which opposition was fi led (namely, from 15 January 2002 to 14 January 2007), Isorana submitted:

• several samples of clothing items upon which the LOREN SCOTT mark was affixed;
• a catalogue dated 2004 showing the LOREN SCOTT mark for clothing and headgear articles and indicating four addresses of Isorana in different towns on the island of Tenerife and a website;
• twelve invoices dated from 22 January 2002 to 12 April 2007, bearing the mark LOREN or LOREN SCOTT and totalling slightly more than EUR 600. The invoices were numbered and this numbering was spaced out, indicating the invoices submitted were purely illustrative.

Taking guidance from established case law regarding genuine use, the Opposition Division held that, while the commercial volume and revenue from goods sold under the earlier mark was not high, it was offset by the fact that use of the mark was very regular and the unit cost of the goods was low. Given the invoices submitted as evidence formed part of a larger collection of invoices (which were not submitted), it was held that the invoices submitted reflected an illustration of the level of sales, rather than an absolute reflection of sales. As a result, in this case the Opposition Division held that use of the earlier mark was quantitatively significant in order for use of the earlier mark to be deemed genuine, a conclusion that the BoA upheld.

The Court was satisfied that the BoA had carried out an overall assessment of factors governing whether the mark had been put to genuine use, deciding that the evidence demonstrated that the sales effected constitute use that objectively was such as to create or preserve an outlet for the goods concerned. Therefore, the Applicant’s first plea was rejected.

Second plea

The Applicant submitted several documents in support of its claim that its mark was wellknown in Spain. Of those, only one press article pre-dated the date of application for registration such that the remaining evidence was not taken into consideration. The contested decision concluded that the admissible evidence did not show that Ms L’Wren Scott had celebrity status among the relevant Spanish public, with the consequence being that the relevant public would perceive the mark applied for as forming an autonomous conceptual unit, rather than as the mere association of two elements, namely ‘l’wren’ and ‘scott’.

It followed that the mark as applied for did not convey strong conceptual differences from the earlier mark. Thus, the Court agreed with the Opposition Division and BoA’s finding that the signs at issue had an average degree of visual and phonetic similarity, leading to a likelihood of confusion. Therefore, the second plea was rejected and the action dismissed in its entirety.

This case provides a helpful reminder of the principles to be applied when considering genuine use of a trade mark, as well as ensuring that any evidence relates to the relevant timeframe.

Nick Bowie  10 July 2015

This article was first published in the June 2015 issue of the ITMA Review, the journal of the Institute of Trade Mark Attorneys (ITMA). For more information on ITMA, please visit http://www.itma.org.uk/