Type Of Trademark And Evaluation Of Its Genuine Use | In Principle

The Court of Justice has finally resolved the case of an EU trademark displaying an X on the side of a sports shoe. The German company Deichmann SE sought revocation of the registration, claiming there was no genuine use of the mark.

Deichmann SE v EUIPO, Case C-223/18 P, Court of Justice judgment of 6 June 2019

State of facts

We reported on this case at the stage of proceedings before the General Court here. In this case, the Spanish company Munich SL had sought registration with the European Union Intellectual Property Office of figurative trademark no. 002923852 for goods in Class 25, sports footwear:

EUTM no. 002923852

The mark was registered in 2004. In 2010 Munich filed an action for infringement of its rights to this trademark by the German-based company Deichmann SE. In response, Deichmann sought revocation of the rights to the mark due to lack of genuine use of the mark.

The key issue was to determine what fell within the protection of the trademark and whether classification of the mark in the application in a specific category of mark, i.e. a figurative mark, determined its scope of protection. Deichmann argued that despite the use of broken lines suggesting it was a position trademark, Munich’s mark was filed and registered as a figurative mark, i.e. the stylised image of a laced shoe with two crossed stripes on the side. In Deichmann’s view, the protection of this mark thus covered its entire graphic presentation, including the shape of the shoe and the laces.

The evidence of use of the mark submitted by Munich involved models of shoes bearing two crossed stripes on the side of the shoe, but differing in appearance from the shoe presented in the trademark application, as in the examples below:

The General Court held that the contours of the shoe were not the subject of the reservation, and the use of broken lines was intended only to indicate the location of the stripes on the shoe. In the opinion of the General Court, the scope of protection of a trademark is determined not only by its classification as a figurative market or position mark, but by the nature of the mark in the form in which it was registered. Consequently, the evidence submitted by Munich demonstrated genuine use of the trademark.

Deichmann appealed to the Court of Justice.

Essence of classification of mark and the scope of its protection

In its appeal, Deichmann first objected to the ruling by the General Court that classification of the type of trademark is irrelevant. In Deichmann’s view, to find that the mark was genuinely used, it is necessary to start with a determination of whether it was registered as a position mark or a figurative mark, as the legal grounds, subject and scope of protection associated with various types of trademarks and their use differ in these situations.

However, the Court of Justice held that as of the date of filing of the trademark, the applicable law did not contain a definition of the notion of a “position” trademark, and thus it was not error for the General Court to find that the classification of the disputed trademark as a figurative or position mark was not relevant. The Court of Justice cited its earlier case law in which it held that in assessing the distinctiveness and genuine use of a mark, the classification of the mark as figurative, three-dimensional or a special category of mark is irrelevant.

Second, Deichmann alleged that the disputed mark was erroneously treated by the General Court as a position mark, even though it was expressly registered as a figurative mark.

But in the view of the Court of Justice, the fact that the disputed mark was registered as a figurative mark is not the decisive factor in determining the scope of the protection sought: “When assessing the characteristics of a sign, in addition to the graphic representation and any descriptions filed at the time of the application for registration, other material relevant to identifying appropriately the essential characteristics of a sign may be taken into consideration.”

Third, according to Deichmann, if the trademark containing broken lines was not described as a position mark or if the broken lines were not the subject of an express disclaimer, it should be inferred that these lines are part of the trademark. In this respect, Deichmann cited EUIPO guidelines requiring that a position mark be expressly described as such.

The Court of Justice agreed that when broken lines are used at the time of filing of the trademark, the application may include a description or disclaimer delimiting the scope of protection sought. However, according to the regulations and the case law, such declarations are not required, and EUIPO guidelines “are not binding legal acts for the purpose of interpreting provisions of EU law.” Thus the Court of Justice held that the broken lines forming the contour of the sports shoe and its lacing were not covered by the protection of the mark. These lines were used only to indicate precisely the position of the sign on the goods for which the mark was registered. It follows that “the protection sought covered only a cross, consisting of two black intersecting lines, represented in solid lines.”

Consequently, the Court of Justice dismissed Deichmann’s appeal in its entirety, agreeing with the General Court that the evidence submitted by Munich was sufficient to show genuine use of the disputed mark.

Commentary

In Deichmann the Court of Justice reasoned that an assessment of the scope of protection of trademarks presented graphically using broken or dotted lines should be guided by common sense, not the formal indication of the type of trademark. Significantly, the classification of a trademark as a figurative mark or position mark does not affect its scope of protection and is irrelevant in determining its genuine use.

In this respect, the judgment provides a signpost for interpreting the scope of protection of trademarks registered prior to entry into force of the new EU Trademark Regulation, at a time when many types of trademarks that now exist, such as position marks, had not yet been clearly defined in the law.

It should be stressed that this case involved evaluation of the genuine use of a trademark. Different rules apply in cases aimed at obtaining protection for a mark. In that case, the indication of a specific type of trademark in the application is extremely important and can have far-reaching consequences. This was pointed out by the Court of Justice in its 2018 judgment in C-433/17, Enercon GmbH v EUIPO, which we reported on here. There the Court of Justice upheld the finding by the General Court that the designation of the type of mark is not intended merely to facilitate the administrative procedure, but is required by law and may be decisive on whether protection is awarded to the mark.

Monika Wieczorkowska, Sandra Lipińska, Intellectual Property practice, Wardyński & Partners