July 31, 2019
Munich SL is the owner of a EU trade mark in Class 25 for “Sports footwear”, represented as follows:
The mark was registered on 24 March 2004.
In response to trade mark infringement proceedings issued by Munich in the German courts against Deichmann SE (the claimant in this action), Deichmann applied to EUIPO for a declaration of invalidity and revocation of Munich’s mark under Article 51(1)(a) of the Trade Mark Regulation (207/2009/EC). Deichmann argued that Munich’s mark had not been put to genuine use in the EU in connection with “Sports footwear” during the preceding five-year period.
The Cancellation Division upheld Deichmann’s application and revoked the mark. Munich appealed and the Fourth Board of Appeal annulled the decision and dismissed Deichmann’s application for revocation, finding that there had been use of the mark in relation to “Sports footwear” during the relevant time.
Deichmann appealed to the General Court, which rejected the grounds relied on and dismissed the action in its entirety. In so doing, the GC concluded that the classification of the mark in issue as either a ‘position’ mark or a ‘figurative’ mark was irrelevant. However, it the proceeded with its analysis on the basis that the mark was a position mark.
Deichmann appealed again, this time to the CJEU, alleging infringement of Articles 51(1)(a) and 15(1) of the EU Regulation, arguing that the GC, by deciding that it was irrelevant whether the mark was a position mark or a figurative mark, had failed to consider the importance and the legal consequences of determining the type of mark concerned. It also said that the GC had not correctly determined the subject matter of the trade mark in question, but had regarded and treated it as a position mark when assessing its genuine use. Finally, it said that the GC had incorrectly assumed that Munich had succeeded in demonstrating genuine use of its mark by providing proof that it sold shoes with two intersecting lines on the side.
In the CJEU’s view, the GC did not contradict itself when it found that it was irrelevant whether the mark was a position mark or a figurative mark and then proceeded to treat the mark as a position mark. It was clear that the GC had decided that the mark, whilst coming within the scope of position marks, was also a figurative mark. In any event, the GC had relied on the graphic representation of the mark, regardless of its classification, when assessing whether there had been genuine use; it had noted that the registration only referred to the cross consisting of two black intersecting lines, as these were depicted in solid lines, and that the dotted lines forming the outline of the sports shoe and its laces, were only intended to make it easier to show the position of the graphic design on the side of the shoe.
The GC had, the CJEU said, correctly noted that “position marks” are similar to figurative and three-dimensional marks, in the sense that they relate to the application of three-dimensional elements to the surface of a product, and that when assessing the distinctiveness of a mark, the classification of a “position mark” as a figurative or three-dimensional mark or as any specific category, is irrelevant (Case T-547/08 X Technology Swiss v OHIM (Orange colouring of the toe of a sock) EU:T:2010:235).
The CJEU said that classification was also irrelevant when assessing genuine use. As was held in Joined Cases C-84/17, C-85/17 and C-95/17 Société des produits Nestlé v Mondelez UK Holdings & Services, EU:C:2018:596, the requirements for genuine use are analogous to those for showing that a mark has acquired distinctive character through use.
As for the subject matter of the mark, the CJEU said that it was clear from case law that the graphic representation of a mark must be clear, precise, self-contained, easily accessible, intelligible, durable and objective (Case C-273/00 Sieckmann EU:C:2002:748). The GC had found that two types of graphic design had been used: (i) the dotted lines, which represented the appearance of the product covered by the mark; and (ii) the two solid lines depicting a cross on the side of the shoe. The GC had inferred from this that the dotted lines simply enabled the position of that cross to be specified. The GC had correctly inferred that it was only the position of the cross on the side of the shoe that was covered by the mark, not the outline of the shoe. In fact, the CJEU said, using dotted lines was the usual way of showing such a mark.
Further, the CJEU said, the fact that the mark had been registered as a figurative mark was not relevant here for the purpose of determining its scope of protection. When assessing the characteristics of a sign, in addition to the graphic representation and any descriptions filed with the application, other relevant material can be taken into consideration.
The CJEU rejected Deichmann’s argument that, if a mark containing broken or dotted lines is not described as a position mark or if the broken or dotted lines are not the subject of an express disclaimer, it should be inferred that those lines are part of the mark. The CJEU said that a trade mark applicant was free to specify the scope of the protection requested by adding a description of the subject matter of the mark. However, neither legislation nor case law required the filing of such declarations. The CJEU also rejected Deichmann’s argument that the EUIPO Guidelines state that a position mark must be expressly described as such. The CJEU noted that the Guidelines are not legally binding.
Finally, the CJEU found that the GC had not erred by finding, after thorough examination, that the differences between the mark in question and the version used on the sports shoes marketed by Munich were negligible, which had in turn enabled Munich to establish genuine use of its mark.
The appeal was dismissed. (Case C-223/18 Deichmann SE v EUIPO EU:C:2019:471 (6 June 2019) — to access the judgment in full, go to the curia search form, type in the case number and follow the link).