Rosalia Vila Tobella vs EUIPO

Background and Context

The General Court of the European Union recently delivered its judgment in the case involving Ms Rosalia Vila Tobella and the European Union Intellectual Property Office (EUIPO), concerning the trade mark 'ROZALIYA jewelry for enlightenment'. The case centred on the genuine use of the trade mark registered by Raphael Europe Ltd, with Ms Vila Tobella seeking its annulment.

Initial Proceedings

Raphael Europe Ltd had filed for the registration of the trade mark in 2016, covering various goods in Class 14, including jewellery and related items. The mark was registered later that year. In 2021, Ms Vila Tobella filed for revocation of the mark, claiming it had not been put to genuine use. The EUIPO's Cancellation Division partially revoked the mark, but allowed it to remain for certain jewellery items.

Appeal and Court Decision

Dissatisfied with the partial revocation, Ms Vila Tobella appealed to the Board of Appeal of the EUIPO, which upheld the Cancellation Division's decision. The Board found that the trade mark had been used genuinely for the remaining goods. Ms Vila Tobella then challenged this decision before the General Court, arguing that the evidence of use was insufficient.

Legal Arguments and Court's Analysis

Ms Vila Tobella's primary argument was that the trade mark had not been used in a manner that met the legal standards for genuine use, as required by Article 58(1)(a) of Regulation 2017/1001. She contended that the evidence provided, such as invoices and online advertisements, did not sufficiently demonstrate the mark's use in the EU.

Evidence of Use

The Court examined the evidence, which included invoices, screenshots of advertisements, and other commercial documents. It found that the trade mark had been used in connection with the goods in question, even if not directly affixed to them. The Court noted that the presence of the mark on invoices and advertisements was sufficient to establish a link between the mark and the goods.

Consideration of Export Sales

Ms Vila Tobella also argued that sales outside the EU should not count towards genuine use. However, the Court held that sales to the UK before Brexit, and exports from the EU, were valid considerations under the relevant regulations.

Extent of Use and Market Presence

Regarding the extent of use, the Court acknowledged that while the volume of sales was low, the nature of the goods—being relatively expensive and artistic—justified the limited sales figures. The Court concluded that the trade mark had been used genuinely in the market.

Conclusion and Costs

Ultimately, the General Court dismissed Ms Vila Tobella's action, upholding the Board of Appeal's decision. It ordered each party to bear its own costs, as no oral hearing was convened. This case underscores the complexities of proving genuine use of trade marks within the EU legal framework.

Learn More

For more information on trade mark law, see BeCivil's guide to English Data Protection Law.