General Court claws back overly strict approach to genuine use: BoA erred in rejecting extensive evidence as insufficient

[Marcel Pemsel]

General Court claws back overly strict approach to genuine use: BoA erred in rejecting extensive evidence as insufficient

Marcel Pemsel Monday, December 15, 2025 - General Court, genuine use, Marcel Pemsel, standard of proof, trade marks

How much evidence is enough to prove genuine use of an EU trade mark - and how strictly may the European Union Intellectual Property Office (‘EUIPO’) assess it? In a recent judgment in Gürok v EUIPO (T-563/24), the General Court held that the EUIPO’s Board of Appeal (‘BoA’) had applied standards that were simply too exacting.

Background

Gürok Turizm ve Madencilik AŞ (‘Gürok’) owned EU figurative mark no. 011224821 . It was registered in 2013 for a broad range of goods and services in classes 8, 11, 19, 21, 35, 37 and 39.

In 2022, Olav GmbH (‘Olav’) filed an application for revocation based on non-use. Gürok provided evidence, which the EUIPO’s Cancellation Division considered sufficient to establish genuine use for several goods in class 21.

Upon Olav’s appeal, the BoA found that Gürok’s evidence did not reach the required standard of probative value to demonstrate the extent of use. The absence of sufficient explanations and cross-references hindered that evidence from being solid, objective and sufficient. Gürok appealed to the General Court.

The General Court's Decision

The General Court upheld Gürok’s action, which was supported by the EUIPO.

A procedural hiccup

First, the judges dealt with a procedural issue. In its first written pleading, Gürok requested the Court only to annul the BoA’s decision. At the hearing, Gürok asked the Court in the alternative to alter the contested decision.

The judges held that the alternative head of claim was inadmissible. The application initiating proceedings before the General Court must indicate, inter alia, the subject matter of the dispute and contain the form of order sought by the applicant (i.e. Gürok). Heads of claims submitted only at the hearing are, in principle, inadmissible. They would deprive defendants of an opportunity to prepare a response and thereby infringe the rights of defence. Also, if the heads of claim are not set out in a precise and unequivocal manner in the initial written pleading, the Court might give a ruling infra petita or ultra petita.

New pleas in law may only be introduced if they are based on matters of law or fact which came to light in the course of the proceedings (Art. 84(1) Rules of Procedure of the General Court). As this was not the case, the alternative head of claim was dismissed.

On the substance

1. The Court reiterated consistent case law on genuine use, in particular that it cannot be proved by means of probabilities or presumptions but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned.

It is not necessary for each item of evidence to give information about the place, time, nature and extent of use. Rather, an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items, taken individually, would be insufficient.

2. Gürok had submitted, inter alia, invoices, packing lists and other commercial documentation, dated from 2017 to 2022.

The BoA held that these documents were lacking probative value because it was impossible to determine the specific goods covered by the various product codes and their commercial volume as well as the frequency and the duration of the sales. The invoices did not prove that any goods allegedly bearing the contested mark had been offered in any retail outlet in the EU or purchased by end consumers.

The BoA had also criticised Gürok for not providing invoices of sales to local dealers or to end consumers, good-quality photos of the products in the retailer’s stores within the EU or catalogues or any other advertising material to prove the use vis-à-vis EU consumers.

Two catalogues of goods marked with ‘lav’, dated 2014 and 2023, did also not convince the BoA. It was deemed unclear whether and to which extent the catalogues had been circulated in the EU. Also, they did not establish that the goods had been sold in the EU.

3. The place, time and nature of use of the contested mark were not in question but only the extent.

a. First, the judges were dissatisfied with the BoA’s reasoning:

• On the one hand, the BoA held that the “documentation provided was clear and understandable, making the documentation largely self-explanatory and sufficient for the purposes of the present proceedings”. On the other hand, it found that the evidence was of a poor quality, which did not constitute solid and objective evidence of use of the contested mark. The Court deemed that to be contradictory.

• Likewise, the BoA held that the catalogues did not prove that the concerned goods had been offered for sale in the EU, although the catalogues showed that the applicant was active in the glassware industry and exported its goods to 140 countries, including EU Member States. This was also considered contradcitory.

b. The BoA required evidence that showed the sale to end consumers in the EU. The judges disagreed. Such a requirement would effectively mean that marks used only in inter-corporate relations cannot be genuinely used. The relevant public did not only comprise end consumers but also specialists, industrial customers and other professional users.

c. As regards the extent of use, the judges held that the catalogues showed use from 2014 to 2023, i.e. over a longer and more extensive period than the relevant period, which constituted relevant evidence in the assessment of the extent of use.

c. Gürok had submitted 902 pages of invoices relating to the sale of a multitude of goods covered by the contested mark. The codes in the invoices for the goods could be cross-referenced with Gürok’s catalogues. This exercise was not deemed to amount to a mere estimation of a probability or a presumption, but involved a rational and logical process in the assessment of genuine use.

The explanations provided by Gürok were deemed capable of highlighting the sale of several of the registered goods during the relevant period and in volumes and for amounts sufficiently high to conclude that there was continual, actual and substantial use.

d. The judges also criticised the BoA for criticising Gürok for deliberately refraining from submitting additional information or for having knowingly decided not to give further details regarding the specific references in the invoices. The BoA seems to have intended to require Gürok to carry out cross-referencing work of all 2,919 lines of the invoices with each of the corresponding goods in the catalogues. However, the BoA did not seek any additional information or explanation, so it was not entitled to accuse Gürok of any intentional failure to provide evidence or facts.

In essence, the judges held that the burden of proof is satisfied where documents establishing genuine use are submitted. There is no requirement for “quality of proof that exceeds the admissible threshold for evidence of effective and sufficient use that would be corroborated by sufficient items of evidence or a set of indicia resulting from the interdependence of the various relevant factors”.

Comment 

 

Dumping a load of documents on the EUIPO and the BoA might be easy for the trade mark owner who has to establish genuine use but is burdensome for the members of the divisions of the EUIPO and the BoA who have to go through them (and, of course, for the counterparty’s lawyer). It seems that the General Court’s decision is too generous and the BoA’s decision too strict. It should be required that the trade mark owner establishes good by good and service by service the nature, duration, place and extent of use by explaining which of the goods and services is referenced in which document and where. It is, of course, not necessary to do this for each line on each invoice but for a sufficient amount of invoices so as to dispel any doubts about the extent of use.

 
The picture is by Muhammed Fatih Beki and used under the licensing terms of pexels.com.