Company names and trade marks

Within the EU the attack of a trade mark on the basis of a company name is often problematic with regard to proofs both against national trade marks and EU trade marks. According to the EU Trade Marks Harmonization Directive Art. 4.4 (b) a member state may provide for such action. If it does, this Article foresees three cumulative conditions:

i) the company name must be used in the course of trade;
ii) it must have been acquired earlier than the priority date of the attacked trade mark; and
iii) it must confer on its proprietor the right to prohibit the use of the trade mark.

For attacks against an Community Trade Mark (CTM) there is a fourth condition in Art. 8 (4), namely it must have more than a mere local significance. These for conditions were lately confirmed by a decision of the General Court in T-345/13 of 4 July 2014, side no. 40, concerning the sign CPI.

In Austria company names are not a ground for opposition but only for an invalidity action. For CTMs they are opposable in both types of procedure. While in procedures before OHIM proof is necessary to convince the boards that company names confer on its proprietor the right to prohibit the use of the trade mark in that member state (by proving the wording of the written law and by case law), this is normally not necessary in national proceedings since the national judges know the law and the case law. However, what remains are proofs of use in commerce of the company name and (also in Austria) that the company name has not only a local significance. This latter condition can be proved by showing that the company's activity is widespread.

In the a/m CPI case (T-345/13) the question of use in commerce was decisive. It was explained that such commercial use must be directed towards achieving an economic advantage. In order to judge whether such use is sufficiently significant in commerce the buyers, the consumers and the suppliers plus the competitors have to be taken into account.

In said case, only documents of creditors and of suppliers were presented as proofs. The creditors' documents were disregarded not at least for the reason that in these documents the full company names were not spelled out. The bills of suppliers are to be taken into account. However, for themselves alone they are not sufficient to show use in commerce in the absence of any proof regarding buyers or consumers. Suppliers' bills alone do not show the aim of a use of a company name to achieve an economic advantage. Thus, the rejection of the opposition was upheld for lack of sufficient proof of use in commerce.

DI Helmut Sonn