Who bears the burden of proof?

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Austin Simon
6 years ago
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1 Who bears the burden of proof? Pelikan case: The other party 21: [ ] Where the applicant for a declaration of invalidity seeks to rely on that ground, it is for that party to prove the circumstances which substantiate a finding that the Community trade mark proprietor had been acting in bad faith when it filed the application for registration of that mark. 57: [ ] there is a presumption of good faith until proof to the contrary is adduced. Thus, contrary to the applicant s contention, Pelikan was not required to prove use of the contested Community trade mark.

2 What do we tell the client? Of course, it depends on the circumstances of the case... but I have a theory. You certainly know the decision by the Court of Justice in the design case C-345/13 KAREN MILLEN FASHION -KMF- v. DUNNES, of June 19, It deals with a similar issue: who has the burden of proof. Why can t we try to apply its holding to an hypothetical bad faith invalidity action?

3 36 The referring court asks, in essence, whether Article 85(2) of Regulation No 6/2002 must be interpreted as meaning that, in order for a Community design court to treat an unregistered Community design as valid, the right holder of that design is required to prove that it has individual character within the meaning of Article 6 of that regulation, or need only indicate what constitutes the individual character of that design. The referring court asks, in essence, whether Art. 52(1)(b) CTMR must be interpreted as meaning that, in order for the Office/Court to treat an CTM registration as having being filed in bad faith, the applicant of the invalidity is required to prove, in according with Case T-136/11 PELIKAN, that the CTM owner has re-filed a trademark to circumvent the requirement of use within the meaning of Art. 15(1) of that regulation, or it only needs indicate what constitute the elements of such circumvention.

4 37 It is apparent from the very wording of Article 85(2) of Regulation No 6/2002 that, in order for an unregistered Community design to be treated as valid, the right holder of that design is required, first of all, to prove that the conditions laid down in Article 11 of that regulation have been met and, secondly, to indicate what constitutes the individual character of that design. It is apparent from the very wording of the 10th Whereas, and of Article 15(1) that, in order for CTM to be treated as valid, the right holder of that CTM is required, first of all, to prove that the conditions laid down in Article 15 of CTMR have been met.

5 38 Under Article 11(1) of Regulation No 6/2002, a design which meets the requirements under Section 1 of that regulation is to be protected by an unregistered Community design for a period of three years as from the date on which the design was first made available to the public within the European Union. Under Article 15(1) a CTM which does not meet the requirements under Section 1 shall be subject to the sanctions provided for in this Regulation, i.e. revocation under art. 51(a) unless there are proper reasons for nonuse within the European Union.

6 39 As indicated by the very heading of Article 11(1) thereof establishes a presumption of validity of registered Community designs and, in paragraph 2, a presumption of validity of unregistered Community designs. As indicated by the very heading of Article 51, grounds for revocation lack of use for the period establishes the main reason why a registered CTM must be revoked.

7 40 The implementation of that presumption of validity is, by its very nature, incompatible with the interpretation of Article 85(2) of Regulation No 6/2002 advocated by Dunnes, to the effect that the proof which the holder of a design must make out under that provision, namely that the conditions laid down in Article 11 of that regulation have been met, includes the proof that the design concerned also satisfies all of the conditions laid down in Section 1 of Title II of that regulation, that is to say, Articles 3 to 9 thereof. The implementation of a presumption of validity of a refiled non used mark is, by its very nature, incompatible with an interpretation of Article 52(1)b to the effect that the proof which the applicant of a revocation action must make out under that provision, namely: - that the conditions laid down in Article 15(1) of that regulation have been met, - including the proof that the CTM owner had neither proper reason for non use nor any other justification for refiling the CTM whose invalidity is contested and - the refiling was only made to circumvent the requirement to use the CTM registration as embodied in art 15(1) and the consequences of art. 42(2)

8 41 Similarly, the interpretation of 85(2) of Regulation No 6/2002, read in conjunction with Article 11 of that regulation, as proposed by Dunnes, would have the effect of rendering meaningless and nugatory the second condition, laid down in Article 85(2), that the holder of a design must indicate what constitutes the individual character of that design. Similarly, any interpretation of 15(1) made not in conjunction with Art. 42(2) would have the effect of rendering meaningless and nugatory the condition, laid down in Art. 15(1), that the holder of a non used CTM must be subject to the sanctions provided for in this Regulation, i.e. revocation under art. 51(a).

9 42 Nor would that interpretation be compatible with the objective of simplicity and expeditiousness which, as evidenced by recitals 16 and 17 in the preamble to Regulation No 6/2002, underpins the idea of protection of unregistered Community designs. Nor would that interpretation be compatible with the objective of justifying the protection granted to CTM registrations which, as evidenced by Recital 10 in the preamble to the CTMR, and 9 th of the TM Directive underpins the idea of protection of CTMS only to genuine use

10 43 In that context, it should be noted that the different procedures provided for in Article 85 of Regulation No 6/2002 with regard to a registered Community design and an unregistered Community design arise from the need to determine, with regard to the latter, the date as from which the design at issue is covered by the protection under that regulation and specifically what is covered, which, as there are no registration formalities, may be more difficult to identify in the case of an unregistered design than for a registered design. In that context, it should be noted that the different procedures provided for in Art. 42(2) with regard to oppositions and art. 57(2) second sentence on the proof of use arise from the need to determine the date as from which the extent of protection of the CTM at issue needs to be justified and specifically what is covered, both of which may obviously be impossible to identify in the case of a refiling of a CTM

11 45 As regards the second condition set out in Article 85(2) of Regulation No 6/2002, suffice it to note that the wording of that provision, in merely requiring the holder of an unregistered Community design to indicate what constitutes the individual character of that design, is unambiguous and cannot be interpreted as entailing an obligation to prove that the design concerned has individual character. As regards the second condition set out in Pelikan at 57, i.e. that there is a presumption of good faith until proof to the contrary is adduced suffices it to note that such wording merely acknowledges that presumption of good faith is a rebuttable one but does not set the appropriate standard of proof and cannot be interpreted as entailing an obligation to prove that the CTM was filed in bad faith

12 46 Although, given the lack of registration formalities for this category of design, it is necessary for the holder of the design at issue to specify what he wants to have protected under that regulation, it is sufficient for him to identify the features of his design which give it individual character. Given that only the CTM owner may justify its lack of use, it will be only necessary for the applicant of a revocation action to specify the evidence of a protracted lack of use of an earlier refiled trademark to satisfy its burden of proof and it will be then the CTM owner which will have to prove that it refiling is justified by reasons others than unlawfully protracting protection

13 In those circumstances, the answer to the second question is that Art. 85(2) of Reg. o 6/2002 must be interpreted as meaning that, in order for a Community design court to treat an unregistered Community design as valid, the right holder of that design is not required to prove that it has individual character within the meaning of Article 6 of that regulation, but need only indicate what constitutes the individual character of that design, that is to say, indicates what, in his view, are the element or elements of the design concerned which give it its individual character. In those circumstances, the answer to question is that Art. 52(1)(b) of CTMR must be interpreted as meaning that, in order for CTM registration which is the refiling of an earlier non used CTM to be revoked for bad faith, the applicant of that action is not required to prove that the CTM owner had acted in bad faith, but needs only indicate what constitutes the sanctionable non-use, that is to say, indicates what, in her view, are the element or elements of the refiling which give it a prima facie appearance of circumventing the requirement of use ex art. 15 CTMR.

14 SO.. DOES IT FLY?

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