Case T-450/07

Harwin International LLC

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

Community trade mark – Invalidity proceedings – Figurative Community trade mark Pickwick COLOUR GROUP – Earlier national trade marks PicK OuiC and PICK OUIC Cuadrado, S.A. VALENCIA – Request for proof of use – Article 56(2) and (3) of Regulation (EC) No 40/94 (now Article 57(2) and (3) of Regulation (EC) No 207/2009))

Summary of the Judgment

Community trade mark – Surrender, revocation and invalidity – Examination of the application – Proof of use of the earlier mark

(Council Regulation No 40/94, Arts 43 and 56(2))

So far as the principles underlying it are concerned, the system provided for by Article 56 of Regulation No 40/94 on the Community trade mark concerning cancellation proceedings, which refers also to Article 43 of that regulation concerning opposition proceedings, must be described as follows:

–        the proprietor of an earlier trade mark is obliged to prove the use of its mark only if that use is challenged by the proprietor of the trade mark which is the subject-matter of an application for a declaration of invalidity;

–        in the absence of such a challenge, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) may confine itself to considering whether a likelihood of confusion exists, without considering proof of use;

–        where there is such a challenge of the use, whether by means of a request for proof of use submitted by the proprietor of the trade mark which is the subject-matter of an application for a declaration of invalidity or by means of that party challenging the evidence submitted by the proprietor of the earlier mark to prove use, the Office is required to examine the issue of proof of use prior to that of the existence of a likelihood of confusion.

(see para. 25)