Genuine Use

The aims and conditions connected with proof of genuine use of the Community or national trade mark are different from those relating to proof of use, in the course of trade, of the sign referred to in Article 8(4) of Regulation No 40/94. First, unlike Article 43(2) of Regulation No 40/94, Article 8(4) of that regulation does not require proof of ‘genuine use’ of the sign relied on in support of the opposition. (T-430/08 Grain Millers, Inc. v OHIM (GRAIN MILLERS) [2010]). Next, it should be noted that a sign is used in the course of trade where that use occurs in the context of commercial activity with a view to economic advantage and not as a private matter (C-206/01 Arsenal Football Club [2002], C-48/05 Adam Opel [2007], T-430/08 Grain Millers, Inc. v OHIM (GRAIN MILLERS) [2010]).

Although Article 43(2) and (3) of Regulation No 40/94 may be applied in opposition proceedings under Article 8(1)(b) of that regulation, in opposition proceedings under Article 8(4) of Regulation No 40/94, the opposing party must show that the sign on which he relies gives him the right, according to the legislation of the Member State concerned, to prohibit the use of a subsequent trade mark. Moreover, unlike the provisions of European Union law in respect of a Community trade mark, European Union law did not provide for any consequences in the event of absence of use without due cause of a business name during a certain period, that question thus being governed by the national law applicable. Lastly, although Article 43(2) and (3) of Regulation No 40/94 provides that genuine use of the earlier mark must be proved in the territory of the Member Sate of which the law is invoked, it is not apparent from the wording of Article 8(4) of the regulation that the sign at issue must also be put to use in the Member State of which the law is invoked. The signs covered by that provision may be the subject of protection in a specific territory, even though they were not put to use in that territory but only in another territory. (T-430/08 Grain Millers, Inc. v OHIM (GRAIN MILLERS) [2010]).