Points to remember from an EUIPO annulment appeal

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The European Union Intellectual Property Office (EUIPO) recently rejected an action for cancellation of the trademark in the image below (Trademark), relating to flour, on a number of grounds.

Cancellation plaintiff Aytac Handels GmbH (Aytac Handels) claimed bad faith, copyright ownership of the trademark image and prior unregistered rights, among others.

This case shows the need to be fully prepared for EUIPO procedures and the importance of registering trademark rights.

Aytac Handels has appealed the rejection of its cancellation request against the Brand. He failed on appeal, mainly due to lack of sufficient evidence.

Since the registered trademarks were presumed to be valid, Aytac Handels had a burden of proof in terms of nullity, which it did not discharge.

bad faith

Aytac Handels alleged bad faith on the part of the owner of Mark’s, Recap Ercan, a British company, because the managing director of Recap Ercan was previously managing director of a company to which Aytac Handels flour was sold. This was rejected because no prior rights to Aytac had been established by Aytac Handels. There was no indication that Aytac Handels’ products had been delivered to Recap Ercan.

The First Board of Appeal held that even if Recap Ercan knew that an identical or similar sign was being used by a competitor, that would not, in itself, lead to a finding of bad faith – malicious intent, in this case, has not been proven.

Copyright

Aytac Handels has claimed copyright ownership of the image contained in the Mark. She did not provide evidence of relevant national copyright law at the initial hearing. On appeal, she referred to German copyright law and argued that the image was created by one of her employees in 1999 as part of her employment contract. However, he did not provide the name of the employee or how the image met the characteristics of an artistic work under this law.

Therefore, the copyright claim was rejected.

Prior rights

Aytac Handels has claimed prior rights to its former company name for the word “Aytac” and the figurative sign below for the manufacture and trade of foodstuffs in Germany, Belgium and the Netherlands.

She did not produce evidence of the relevant laws in Belgium and the Netherlands, so the Commission did not accept these claims.

Aytac Handels referred to a section of German Trademark Law relating to the protection of company names and provided evidence, such as invoices and business documents. However, the evidence provided was insufficient to demonstrate the use of more than ‘simple local meaning’. Additionally, Aytac Handels had stopped using the device sign as its logo by mid-2018. Consequently, there was no evidence of use of this logo at the date of filing of the Mark.

Lessons learned

Unfortunately, for Aytac Handels, his appeal was unsuccessful. However, there are a few lessons for brand owners:

  • When trademarks contain graphic or artistic elements, make sure that the copyright in the work belongs to the owner of the mark. If created by third party contractors, copyright should be assigned to the trademark owner. If created internally, ensure that the details, including the date of creation and the name of the employee who created it, are fully documented.
  • Register trademarks, including graphic elements. If the graphic element, such as the image of this mark, is a trademark, it can be registered as such. This allows more flexibility, for example if you rename the name or want to use it for different products in a range.
  • Be fully prepared when taking action to enforce or revoke a trademark. Although it may be difficult to have all the evidence in advance, other evidence may not be admissible at the appeal stage of the proceedings.

Conclusion

Companies in the agri-food industry generally manufacture several products and product lines. It is imperative to have effective brand protection for product lines, including packaging graphics.

Brand protection enhances the value of products as assets in their own right. It also increases the likelihood of success in trademark enforcement or other actions, such as cancellation proceedings.

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