An interesting case from practice of the team of IP Consulting from its work with the Office for Harmonization in the Internal Market (OHIM) is its success to defend the validity of the trademark registration DIVIN (one of the few brands that are exclusive state property of the Republic of Moldova). The trademark is used as a brand of high quality Moldovan spirits.
The validity of the trademark DIVIN is contested by a Spanish company that has a Spanish national trademark DIVINUS. The request for cancellation is filed under Article 51, paragraph 1(a) in connection with Article 8, paragraph 1(a) and (b) of the Regulation on the Community trade mark – existence of an earlier national mark.
According to the Spanish company the trademarks DIVIN and DIVINUS are similar to such degree that if they are used simultaneously а danger of misleading consumers exists and may result in making of a connection between the two marks.
But at the same time, the proprietor of the earlier trade mark failed to demonstrate through appropriate means that he actually used the earlier mark, from which he derives his rights, during the five year period prior to the filing of the request for deletion.
OHIM rejects the request for deletion entirely and confirms in his decision the established practice that to accept the existence of genuine use of a trade mark, the proprietor must prove beyond doubt: how was the trademark used, on what territory was the trademark used, and in what volumes was realized the use.
