Challenging a registered trademark in the European Union demands more than assertions of similarity or potential confusion, it requires a rigorous, evidence-backed legal strategy. A recent General Court of the European Union judgment involving Polish optical equipment manufacturer Salumanus sp. z o.o. and Hong Kong-based Heyoptics Co. Ltd. illustrates the formidable hurdles businesses face when seeking to invalidate an EU trademark.
The ruling highlights two essential requirements for entities navigating intellectual property disputes: robust documentation of earlier rights, such as copyright, and procedural discipline during administrative proceedings. For legal practitioners and business leaders, the case demonstrates that trademark monitoring and proactive evidence preservation are fundamental components of litigation readiness.
Insufficient Proof of Prior Copyright
Salumanus sought to invalidate Heyoptics’ figurative "lightoptics" trademark by invoking grounds under Regulation (EU) 2017/1001: ownership of an earlier copyright and the applicant’s bad faith. The court dismissed both arguments, with the copyright claim failing due to insufficient proof of authorship and timeline.
Under EU law, a party asserting invalidity based on earlier copyright must clearly establish the acquisition, continued existence, and scope of protection of that right. Commercial use alone is insufficient, one must prove creation. Salumanus submitted invoices, product photographs, and correspondence, but the General Court found these materials lacked the specificity required to demonstrate the sign was created prior to Heyoptics’ application in November 2021.
Crucially, the contract with the graphic designer did not explicitly reference the development of the specific sign in question. Furthermore, notarized website extracts submitted were dated years after the critical timeline, rendering them irrelevant for establishing priority. This outcome underscores a common pitfall: relying on general business records rather than precise, timestamped documentation of creative work.
Procedural Discipline and the Admissibility of Evidence
A significant aspect of the ruling concerns the admissibility of evidence introduced for the first time at the judicial stage. Salumanus attempted to introduce emails from 2018 and 2021 during General Court proceedings, arguing they had been archived and difficult to retrieve.
The court rejected this evidence outright. The General Court’s role is to review the legality of the European Union Intellectual Property Office (EUIPO) Board of Appeal’s decision based on the factual and legal circumstances available to that body at the time. Allowing parties to file new evidence later would undermine the integrity of the administrative process.
For businesses, this signifies that EUIPO proceedings are decisive. The evidentiary record must be complete before the trademark office. Relying on the retrieval of documents during judicial review is a strategic error that typically results in their exclusion from the record.
Defining Bad Faith in Trademark Disputes
Salumanus also argued that Heyoptics acted in bad faith by copying its sign and appropriating product photographs. The court reiterated that bad faith must be assessed based on all relevant circumstances existing at the time of application. An applicant is presumed to act in good faith unless sufficient evidence proves otherwise.
Similarity between signs or overlapping commercial activities does not automatically equate to dishonest intent. To prove bad faith, a challenger must demonstrate that the applicant knew, or should have known, of the earlier use with the intention of exploiting it or blocking the true owner. Salumanus failed to provide evidence that Heyoptics was aware of its prior use or intended to exclude them from the market.
Strategic Implications for Intellectual Property Management
This judgment offers several actionable insights for companies managing brand protection:
- Document Creation Rigorously: Maintain dated records of logo creation, including drafts, designer agreements specifying copyright ownership, and initial commercial deployment logs. General invoices are rarely sufficient to prove an authorship date.
- Preserve Evidence Early: Identify and archive relevant communications, contracts, and usage evidence immediately upon discovering potential infringement or preparing for invalidity proceedings. Do not assume documents can be retrieved later.
- Monitor Proactively: Trademark monitoring allows companies to detect conflicting applications early, enabling the building of a stronger case regarding awareness and knowledge - key components of bad faith claims.
- Understand Legal Standards: Recognizing that "similar signs" do not equal "bad faith" helps businesses calibrate expectations and allocate resources toward claims with higher probabilities of success, such as clear priority disputes or registered right violations.
In the complex landscape of EU intellectual property law, intuition is not evidence. Businesses must treat trademark challenges with the same rigor applied to financial audits, ensuring every claim is backed by precise, timely, and admissible proof.