HUGO BOSS Trade Mark Management GmbH & Co. KG v. Reemtsma Cigarettenfabriken GmbH

The opposition did not contain any explicit indication of which G&S it was directed against. With the exception of ‘sales services in the field of tobacco goods, the ODs decision to reject the opposition has already become absolute as regards the G&S. The opposition is based on French trade mark (a) only. The opponents notification on the cancellation or withdrawal of the other opposing trade marks involves a corresponding restriction of the opposition. In any event, the opposition remains unfounded in this respect. Insofar as the opponent claims that once an action had been brought for cancellation of the opposing trade mark (13 January 1999), it could not reasonably have been expected to use the trade mark in France, this does not constitute a reason for the lack of use in the period from August 1996 to the end of 1998. In this respect there is a lack of causation of the alleged reason for the lack of use. This period of two-and-a-half years is long enough for use to have taken place within it. On these grounds alone, the invocation of proper reasons must remain unsuccessful. However, the national proceedings brought against the opposing trade mark can also not be acknowledged as a proper reason for non-use for the period from January 1999 to August 2001. The fact remains that proper reasons for non-use are only those outside the sphere and influence of the trade mark proprietor, for instance national authorisation requirements or import restrictions. With regard to the trade mark to be used, these are neutral, and do not concern the trade mark, but the goods and services that the proprietor wishes to use. The aforesaid authorisation requirements or import restrictions exist in relation to the type or properties of the product to which the trade mark is affixed, and cannot be circumvented by choosing a different trade mark. In the present case, conversely, the trade mark proprietor could have readily manufactured cigarettes in France or imported them into France if it had chosen a different trade mark. The appeal is dismissed.