Background of the case

On 6 July 2010, Mr Arkadiusz Kaminski filed an EUTM application, seeking for the registration the word sign SYRENA for the goods in Class 9, 12 and 28. On 2016, Polfarmex filed an application for revocation against all the goods covered by the referred trademark. The matter reached the Board of Appeal, where it was found that it was solely shown genuine use for “cars” in Class 12. In short, it considered that that despite the lack of evidence of the actual sale of goods, several items of evidence indicated that cars were about to be marketed and that the preparatory work to secure customers for those cars appeared to be underway.

Subsequently Polfarmex filed an application before the General Court claiming that the Court should annul the contested decision.

Decision of the General Court

The Court states that the Board of Appeal was fully entitled to hold that the evidence provided was sufficient to constitute genuine use, as it shows, and is more sufficient, to demonstrate the commencement of such use.

To be more accurate, the Board of Appeal concluded that genuine use of the earlier mark had been shown in relation to sport and electric cars. However, the Court concludes that the contested decision is vitiated by inadequate reasoning since it does not enable the Court to understand the extent to which the evidence produced showed genuine use in respect of sports cars, as the Board did not identify the documents in the case file that made possible to establish genuine use in relation to such goods.

Concerning the subcategory of electric cars, the Court sets that the mere reference to a meeting where the project of manufacturing electric cars is explained, is insufficient to show genuine use. Therefore, the Board is wrong in considering that genuine use of the mark had been shown as regards this sort of cars but racing cars.

Lastly, the applicant raises a last claim regarding the threshold intended for specialized goods, in particular racing cars, in order to make a finding of genuine use in respect of cars in general. The Court rules that, to the extent that genuine use of the mark has been established in relation to racing cars alone, which constitute an independent subcategory within the meaning of the case-law cited, the Board of Appeal was wrong to find that genuine use had been shown in respect of cars in Class 12. On that basis, the contested decision must be annulled.

Judgment of the General Court (Second Chamber) Of 23 September 2020. Case T‑677/19.