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Evidence of genuine use use in the EU - affidavit worthless without further proof

by Susanna Heurung 

The European Court has confirmed that an affidavit from the managing director of the EU mark owner alone is not sufficient to prove genuine use (CFI, judgment of 12 March 2020 - T-321/19). The trademark in question was therefore cancelled.

Facts of the case

An EU trademark was registered in 2011 for slot machines, among other things. In 2016, the trademark was attacked with an application for revocation and accordingly cancelled by the EUIPO in 2019 due to non-use. The owner of the trademark had submitted an affidavit of its managing director and photos of gaming machines as proof of use.   

Verdict

The court considered the documents submitted to be insufficient. In particular, no delivery notes, purchase orders, sales figures or invoices had been submitted as evidence of use. The requirement of genuine use does not mean that the commercial success or the economic strategy of a company is evaluated. An affidavit was also in principle admissible evidence. When assessing its evidential value, however, the credibility of the information contained therein had to be examined. Without further documents supporting the affidavit, it would not provide sufficient evidence, as it was made in the trademark owner’s own interest.

Practical tip

Providing enuine use of trade marks is often a major problem because the requirements for the information and documents to be submitted are underestimated. If the use of an EU trademark cannot be proven, proceedings based on this trademark will be lost for this reason alone. In the worst case, trademarks can even be cancelled. An affidavit of the owner does not necessarily help. Its evidential value is considered to be low, as it is issued in the trademark owner’s own interest and does not originate from an independent source. In order to be able to support such statements with further documents, owners of EU trademarks are well advised to continuously collect all documents relating to the use of their trademark from the moment of its registration. As an owner of an EU trademark, you should always be able to state exactly in which year you sold which quantities of products of the protected trademark in which EU country and what turnover you achieved with them. Sample invoices must be available for each year in the same way as photos of the relevant products with the trademark attached to them.


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