A recent decision of the General Court has confirmed that TMview extracts are sufficient to substantiate earlier trade mark applications/registrations for the purposes of contentious proceedings at the EUIPO.
Launched in 2010, the TMview database is managed by the EUIPO and provides users with access to details of trade mark applications/registrations in a large number of jurisdictions. Despite being managed by the EUIPO, the TMview tool is no longer limited to marks with effect in EU Member States – there are a wide range of participating Offices around the world, including across Asia (through TMview or ASEAN TMview) and South America, as well as the US and Canada. At the date of writing, the data relating to over 50 million trade marks is available via TMview and this number is only set to expand.
The case of Deichmann SE v EUIPO concerned the substantiation of an EU designation of International Registration. Diechmann appealed the Fourth Board of Appeal’s finding that the TMview extract was not sufficient to prove the existence of the earlier right relied on. Overturning this decision, the General Court held that the TMview extract submitted by Diechmann was equivalent to a copy of the registration or renewal certificate. Whilst this case related to the substantiation of an EU designation of an International Registration, the Court also held that if all relevant information relating to the validity, extent of goods/services covered and the existence of the earlier marks is present in the TMview extract, this is sufficient to corroborate earlier national rights in the EU. In reaching its decision, the General Court also confirmed that accepting extracts from the TMview databases neither creates legal insecurity nor inequality on the basis that the participating Offices are themselves responsible for the data available through this central resource.
Whilst trade mark practitioners have long relied on TMview to obtain trade mark details, the General Court’s acknowledgement that these extracts can serve as proof of the existence of an application/registration in proceedings before the EUIPO will assist parties in substantiating any relevant earlier rights in opposition and invalidation action. Care should be taken however to ensure that before relying on these extracts, they contain all relevant information (including the full list of goods and services covered) necessary to support the earlier right(s) being relied on – not checking this information before submitting could, depending on the circumstances and grounds relied on, lead to the automatic refusal of an opposition or invalidation action on the basis of unsubstantiated rights.