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5 May 2009
Red Baron Targeted in Revocation Action
In Sierra Entertainment, Inc. v. Davilex Games B.V. (March 31, 2009) the Cancellation Division of the Office for Harmonisation in the Internal Market (OHIM) has revoked the Registration of Community trademark No. 853119 RED BARON in its entirety.
Freiherren von Richthofen, the descendents of Manfred von Richthofen, the German fighter pilot known as the "Red Baron", applied to register the trademark RED BARON in Classes 9, 16, 39 and 41 and the mark was registered on September 9, 2001. On January 1, 2005 Davilex Games B.V. ("Davilex") began using the mark on computer games and on January 1, 2006 Davilex entered into a licence agreement with Freiherren von Richthofen. OHIM recorded Davilex as the proprietor of the mark on 6 February, 2008, although whether there was any effective assignment of the mark was challenged.
On February 26, 2007 Sierra Entertainment, Inc. ("Sierra") filed a request for a declaration of revocation against the Community trademark RED BARON on the grounds of non-use. The relevant time period during which use was required to be shown was February 26, 2002 to February 25, 2007.
Sierra argued that the evidence of use by Davilex prior to the licence agreement which was submitted as part of the defence of the action should not be taken into account by OHIM as it was not use by or on behalf of the proprietor. OHIM stated that while it usually infers that evidence of use submitted by a proprietor has been carried out with their consent, it could not do so in the present case as Sierra disputed the issue. Therefore, the burden of proof was on Davilex to show that the consent existed. OHIM held that it was clear that Davilex commenced its use of the mark RED BARON without the consent of the Freiherren von Richthofen. The licence negotiations commenced only after Davilex was notified of the prior rights and the fact that the use was allowed to continue did not imply consent. The fact that Davilex was subsequently recorded as a licensee and later as the proprietor of this registration did not alter this conclusion. Therefore the only use that could be taken into account was use during the period that commenced on the date of the licence agreement, January 1, 2006 until February 25, 2007.
Davilex submitted evidence of orders for the computer game DER ROTE BARON ("The Red Baron" in German). OHIM held that use of the mark DER ROTE BARON could not be taken into account as use of the mark RED BARON because the distinctiveness of the mark was altered. It held that it was unlikely to be understood by members of the relevant public to mean THE RED BARON and even those who understood German would immediately perceive it as German, giving the mark a different visual impression and clearly different phonetic pronunciation.
Davilex also submitted evidence of an order for 188 computer games bearing the mark RED BARON. No prices were included on the invoice but OHIM referred to retail and wholesale prices set out in the other documentation. OHIM held that this was the only admissible instance of use and the order quantity was very low. When the nature of the goods as mass market products was considered, it merely amounted to token use and as such this evidence was held to be insufficient to defend the revocation action.
OHIM held that sales of the computer game DER ROTE BARON were inadmissible and that the low quantity of sales of the computer game RED BARON in the context of that market was insufficient for the purposes of proving that there had been genuine use of the mark. Furthermore, any use of the mark made by Davilex made when they were, in reality, an infringer, could not be taken into account. As such the registration was revoked on the grounds of non-use.
Nicole Gernon & Niamh Hall, FRKelly
First published in World Trade Mark Law Report May 2009
