Frigidaire: EU General Court casts a chill on the notion of genuine use

• The EUIPO partially upheld an application for revocation of Electrolux’s mark 'Figidaire';
• The General Court dismissed Electrolux’s argument that the EUIPO had failed to take into consideration evidence concerning US military bases located in the EU;
• The court found that the EUIPO had taken into account the use of the mark on social media in order to assess the genuine character of that use.

On 28 October 2020, the EU General Court rendered its judgement in Case T-583/19, which concerned an action brought against the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 June 2019 (Case R 166/2018-5), relating to an application for revocation of the EU word mark Figidaire.

The court provided a very detailed reasoning on the notion of genuine use and the validity of the evidence of use submitted in the proceedings.

Background

On 13 December 1999 the applicant, Electrolux Home Products Inc, obtained the registration, under No 000071241, of the EU word mark 'Figidaire' for the following goods in Classes 7 and 11:

• Class 7: “Household and commercial clothes washing machines, dishwashing machines; household food waste disposers and trash compactors; refrigeration compressors; electric can openers, blenders, food mixers, food processors, coffee grinders, meat grinders, electric knives, knife sharpeners, meat slicers, ice crushers, juice extractors, pasta making machines”.
• Class 11: “Household and commercial refrigerators, freezers and ice makers; household electric and gas cooking appliances, namely, ranges, ovens, stoves and cooktops; microwave ovens, ranges hoods, room air conditioners, humidifiers and dehumidifiers, waterheaters, water coolers, small electric appliances, including coffee makers, espresso machines, instant hot water dispensers, toasters, toaster ovens, fry pans, air purifiers, ice cream freezers, hair dryers, clothes drying machines”.

On 13 October 2015, D Consult submitted an application for revocation of the mark for all the above-mentioned goods on the grounds, first, that the mark had not been put to genuine use and, second, that it had become the common name in trade for the goods in respect of which it had been registered.

On 23 November 2017, the Cancellation Division partially upheld the application for revocation on the ground that the mark had not been put to genuine use during the period from 13 October 2010 to 12 October 2015 for the following goods:

• Class 7: “Household and commercial clothes washing machines, dishwashing machines; household food waste disposers and trash compactors; refrigeration compressors; electric can openers, coffee grinders, meat grinders, electric knives, knife sharpeners, meat slicers, ice crushers, juice extractors, pasta making machines”.
• Class 11: “Commercial refrigerators and freezers; household and commercial ice makers; household electric and gas cooking appliances, namely ranges, stoves and cooktops; ranges hoods, room air conditioners, humidifiers and dehumidifiers, water heaters, water coolers, small electric appliances with the exception of toasters, kettles, irons”.

The mark remained valid for the following goods:

• Class 7: “Blenders, food mixers, food processors”.
• Class 11: “Household refrigerators and freezers; household electric and gas cooking appliances, namely, ovens; microwave ovens; small electric appliances, namely, toasters, kettles, irons”.

On 23 January 2018, Electrolux appealed against the Cancellation Division’s decision to the extent that it had partially revoked its rights. D Consult requested annulment of that decision insofar as it rejected the application for revocation.

By decision of 17 June 2019, the Fifth Board of Appeal of the EUIPO partially upheld the appeal. It annulled the Cancellation Division’s decision insofar as it had revoked the applicant’s rights in respect of the mark for “coffee grinders, meat grinders, electric knives, meat slicers, ice crushers, juice extractors, pasta making machines” in Class 7 on the ground that genuine use had been established in respect of those goods. Consequently, it rejected the application for revocation insofar as it covered those goods and dismissed the applicant’s appeal as to the remainder, as well as the request for annulment submitted by D Consult.

Electrolux appealed, claiming that the General Court should:

• annul the Board of Appeal’s decision;
• annul the decision of the Cancellation Division; and
• maintain the registration of the mark for all the goods for which it is registered.

General Court decision

The court first recalled some fundamental points concerning revocation and the notion of genuine use.

According to Article 58(2) of Regulation 2017/1001, where the grounds for revocation of rights exist in respect of only some of the goods or services for which the mark is registered, the rights of the proprietor are to be declared to be revoked in respect of those goods or services only.

In addition, there is genuine use of a trademark when it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark.

Electrolux contested the Board of Appeal’s findings concerning the lack of proof of genuine use of the mark as regards, first, “household and commercial clothes washing machines” and “dishwashing machines” in Class 7 and, second, “ranges” and “clothes drying machines” in Class 11. The evidence of use submitted by Electrolux included, among others, the following elements:

• a statement from the director of global licensing operations at Electrolux North America Inc to which the following documents, among others, were annexed: invoices dated between April 2014 and June 2015 evidencing sales of goods bearing the mark Figidaire to the US Department of Defence, submitted as proof of use of those goods in Belgium; and invoices dated between January 2015 and October 2015 evidencing sales of goods bearing the mark to the US Department of Defence in Belgium.
• a statement from the international business development manager at Electrolux North America and Electrolux Home Products Inc to which the following documents, among others, were annexed: invoices dated between November 2011 and September 2015 evidencing sales of goods bearing the mark Figidaire, through the distributor Export 220V, to the US State Department’s military base in Neustadt (Germany); and invoices dated between September 2010 and June 2014 evidencing sales of goods bearing the mark Figidaire to Johann Fouquet GmbH in Neustadt (Germany).
• non-exclusive licences to sell goods bearing the mark between Electrolux Home Products France SAS and Darty et Fils SAS, dated between 20 February 2014 and 19 February 2015.

Taking into account this evidence, Electrolux accused the Board of Appeal of the following three main failures.

Failure to take into consideration evidence concerning American military bases located in member states

The Board of Appeal found that those sales figures were not negligible but that they were likely to reflect the needs of the soldiers living in thos emilitary bases, and not to indicate Electrolux’s intention to create a commercial outlet in the EU for the goods in question.

Electrolux relied on a judgement of the High Court of Justice (England & Wales), Chancery Division, of 18 March 2002, in which it was held that sales of baby food to a US air force base in the United Kingdom constituted genuine use of the mark for those goods, despite the fact that the mark was not used outside that military base. Another judgement of the German Federal Court of Justice of 5 June 1985 and a judgement of the German Federal Patents Court of 1 October 1980 allegedly held that sales of goods in Belgian and American military bases, respectively disrupted competition, in the sense that consumers of the goods concerned could have chosen to purchase similar goods from other distributors outside the military bases.

First, the General Court recalled that the EUIPO is required to decide on the basis of the circumstances of each individual case and that it is not bound by previous decisions in other cases. Some invoices and declarations were referring to goods consigned from Poland, but the Board of Appeal had observed that the goods in question had passed only in transit through that state, with the result that the invoice did not establish use of the mark in the EU.

Moreover, the director of global licensing operations at Electrolux North America confirmed that the goods referred to in the invoices annexed to his statement had been specially modified by adapting European plugs and providing voltage and hertz levels adapted for use in Europe.

Therefore, the board had correctly stated that sales of the goods in question to the US Department of Defence and the US State Department for military bases located in Belgium and Germany were not capable of establishing the applicant’s intention to create a commercial outlet in the EU for the concerned goods.

Failure to take into consideration the sales of goods to Johann Fouquet and the contracts entered into with Darty and Euronics

Electrolux argued that the Board of Appeal had failed to have regard to the case law on the conditions of the territorial extent of the use of a mark by not finding that the sales of goods to Johann Fouquet and the contracts entered into with Darty and Euronics constituted use of a sufficient territorial intensity and extent to establish genuine use of the mark in the EU.1

The court recalled that it cannot be determined in an abstract manner what quantity of products would be such as to validate a serious use. The invoices evidenced the sale to the company Johann Fouquet of 138 washing machines and 42 dryers and that that company was established in Germany. The board had found that the volume of those sales was rather low and noted that no further proof of sales in other German cities had been provided.

Such evidence was not considered as sufficient to constitute a genuine use of the mark in the EU as regards the goods in question.

Failure to take into consideration use of the contested mark on social media

The applicant claimed that the Board of Appeal had erred in law by not taking into consideration proof of use of the mark on social media in conjunction with the other evidence establishing genuine use of that mark in the EU.

The Board of Appeal found that the visibility of the mark on certain social media did not establish genuine use of that mark in the EU. In particular, it found that there was no objective proof that the applicant’s pages on social media concerning the goods in question had been visited by the public residing in the EU territory. It observed, on the contrary, that, according to the print outs of the applicant’s social media pages, those pages appear to be addressed to the public in the US, given that the telephone number indicated began with the international dialing code of that country.

The court thus held that the board had taken into account the use of the mark on social media provided by the applicant in order to assess the genuine character of that use in the EU.

The action was thus dismissed in its entirety.

Comment

This decision is a further reminder of the importance of the issue of genuine use, and of the difficulty of quantifying and assessing the nature of genuine use. Trademark owners cannot be reminded enough of the vigilance that is necessary in matters involving the issue of genuine use.

Florence Chapin is a Trademark Attorney at Novagraaf in Bordeaux.

This article first appeared on WTR Daily, part of World Trademark Review, in November 2020. For further information, please go to www.worldtrademarkreview.com.