Judgment of 17 January 2018 in Case T-68/16 Deichmann v EUIPO – Munich

The General Court (GC) upheld the Board of Appeal’s (BoA) finding that evidence showing minor differences in a cross device nevertheless clearly constitutes genuine use of the cross device as registered.

What happened at EUIPO?

Deichmann filed a revocation action (based on lack of use) against Munich’s figurative EUTM no. 2923852 registered for “sports footwear”:

The Cancellation Division (CD) revoked the mark. It held that the various uses shown in the evidence do not show the mark as registered. Firstly, it held that the mark at issue was figurative and so restricted to that precise depiction (including the shoe outline). Moreover, even if Munich’s mark could be construed as a position mark, the CD considered that the evidence did not show use of such a mark. Instead the CD said that the evidence showed the cross device in different colours of different precise lengths and thickness of the bands and that the bands crossed each other at different angles. The CD highlighted the below specific examples which, it stated, show a sign which was impermissibly different to the cross device as registered. However, at appeal, the BoA overturned the CD’s decision.

What did the General Court say?

The GC essentially agreed with the BoA in overturning the CD’s decision. It confirmed that the evidence adduced by Munich showed genuine use of the cross device as registered. This was in particular true in relation to the below examples:

The Court first dismissed the argument that Munich’s mark must be construed as a figurative mark (and thus as necessarily incorporating the visual of the shoe outline).  The Court held that the mark at issue was defined by its graphic representation and that it cannot “be dissociated from the shape of a part of the goods in respect of which it was protected“. The mark type selected when filing the application (Munich ticked the box “figurative” as opposed to “other” on the application form), was held to be irrelevant in the present case. This was in particular because there was nothing in the applicable legislation in force at the time of filing the application, which would have obliged Munich to select the mark type “other” in order to obtain protection for a position mark.

The Court also turned down Deichmann’s arguments that the uses of the mark shown are impermissible variations of the mark as registered. Instead, the Court considered that examples shown in the evidence (such as in the examples above), constitute genuine use of the mark as registered because they only differ from the mark as registered in negligible aspects.

What is the impact?

This judgment provides further comfort to trade mark owners who have applied for marks prior to the new EU Trade Mark Regulation coming into force and at a time when many currently existing mark types were not defined by the legislation. In particular, the judgment confirms that a figurative mark cannot strictly be reduced to the visual shown in the graphic representation. Instead, a common sense approach of construing the mark must be adopted by the relevant authority. This must take into account the goods and services at issue as well as the legislation which existed at the time of filing the application.