SOFTLY, SOFTLY

A simple, but nonetheless important point from OHIM in the Second Board’s CONSOFT decision.

The applicant applied for a Community trade mark in Class 9 (data processing programs) for the word CONSOFT and device. The opponent based its opposition on its Spanish registration of a similar mark on goods in the same class, alleging a likelihood of confusion. The applicant called on the opponent to prove genuine use.

The opponent produced brochures, but no examples of the mark being used on actual goods. The Opposition Division rejected the appeal, finding that the lack of evidence of use on actual goods meant that genuine use hadn’t been proven.

The Second Board found that the Opposition Division had erred.

The appealed decision was based on the assumption that the mark must actually be affixed to the goods in order for genuine use to take place. That was inconsistent with the wording of Article 15(1) CTMR, which speaks of ‘use in connection with the goods’. Moreover, Art.9 includes affixing the mark to business papers and advertising in the definition of infringing use. Here the mark had clearly been used as a trade mark to indicate the origin of the opponent’s goods and so there was genuine use. Consequently, the decision was remitted to the Opposition Division.

The IPKat thought that this was a rather obvious point, but seemingly not if the issue got so far.