Genuine commercial exploitation of a trademark can also be shown when a position trademark is used in combination with other graphic elements.
Deichmann SE v EUIPO, judgment of the General Court of 17 January 2018 (Case T-68/16)
Apart from the types of trademarks most commonly used in commerce to indicate the origin of goods (word, figurative or word/figurative), unconventional trademarks include “position” trademarks connected with where they are placed on the product.
Neither the current Trademark Regulation ((EU) 2017/1001) nor the prior regulation ((EC) 207/2009) mentions position trademarks as a special category of trademarks. According to the case law, “‘positional’ marks are similar to the categories of figurative and three-dimensional marks as they relate to the application of figurative or three-dimensional elements to the surface of a product” (T-547/08, X Technology Swiss).
In practice, it is accepted that an application for registration of a position trademark should express the mark in a manner reflecting the actual placement on the product. The contours of the mark, i.e. the protected graphic element, should be indicated by a solid line, and the contours of the product the mark is placed on should be indicated with a dotted line (e.g. instructions from the Polish Patent Office).
This was how the Spanish company Munich SL filed a trademark in 2002 with what is now the European Union Intellectual Property Office for sports footwear (class 25), classified as a figurative mark, presenting two crossed stripes on the outside surface of the upper of the sports shoe, without a sole.
In 2011 the German shoe manufacturer Deichmann SE filed an application for revocation of the mark under Art. 51(1)(a) of Regulation 207/2009 on the ground that the mark had not been put to genuine use in the European Union in connection with the goods in respect of which it had been registered.
The Cancellation Division at EUIPO agreed with the applicant, finding that evidence of use concerned forms differing from the mark at issue, with elements altering the distinctive character of the mark within the meaning of Art. 15(1)(a) of Regulation 207/2009. The revocation decision was thus issued due to the lack of genuine use of the mark.
The Board of Appeal at EUIPO disagreed and annulled that decision. It found that the decisive factor for the scope of protection of the mark is not the categorisation of the sign in question as a figurative or position sign, but the nature of the sign as registered. The disputed mark was “designed to protect a specific cross-shaped pattern placed on a specific part of the surface of the designated product, namely, a sports shoe.” As the differences between the registered mark and the mark as used were “negligible” and “barely noticeable if at all,” the evidence of use indicated use of the disputed trademark for sports shoes.
From there, the dispute reached the General Court at the Court of Justice of the European Union. The key to the case was determining the nature of the disputed trademark and the consequences that flowed from that. Deichmann SE alleged in its complaint that the disputed mark could not be regarded as a position mark because it was filed and registered as a figurative mark, presenting the contours of a sports shoe without a sole with two crossed stripes on the side. The rights to the figurative mark should thus be found to be extinguished because the mark was not used in commerce in the form it was registered in.
The General Court began its consideration of the case with examining whether the disputed trademark was a figurative mark or could be regarded as a position mark. The court pointed out that the regulations do not mention the category of position trademarks, nor do they contain an exhaustive list of the types of signs that can function as an EU trademark, but the case law accepts that position marks are similar to figurative marks and 3D marks. The court thus found that figurative marks can also constitute position marks. As of the date of filing of the disputed mark, there was no formal requirement to enclose with the registration form a verbal description of the mark stating that the mark was in the nature of a position mark. In the court’s view, it could not be concluded from the mere fact that during registration of the mark the proprietor ticked the “figurative mark” box that the mark cannot also be regarded as a position mark.
Moreover, the drawing of the trademark presenting the contours of the shoe in a broken line indicates that the exact contours of the shoe were not the subject of the rights asserted to the trademark. “In the present case,” the court held, “the use of a dotted line was clearly intended to demonstrate that only the protection of the cross, represented in solid lines, was covered by the mark at issue, and indeed in a specific position on the sports shoes.” Thus the court had no doubt that the case involved a position trademark, and designating it as a figurative mark in the trademark application was irrelevant.
The court held that the evidence submitted in the case was sufficient to prove genuine use of the position trademark. It appeared from the evidence that the Spanish company filing for protection of the mark sold a significant number of sports shoes, on an ongoing basis, displaying a cross on the side, which differed negligibly if at all from the cross in the disputed trademark. Thus, in the court’s view, the disputed trademark was “used many times in an identical or very similar form to that registered.” It also appeared from the evidence that the cross composed of two superimposed stripes as used on various models of shoes was always clearly perceptible regardless of the presence of other elements on the shoes, and thus those other elements did not alter the distinctive character of the disputed trademark. Consequently, the proprietor had proved actual use of the trademark, and the General Court dismissed the action accordingly.
In this case, the General Court had no doubt that a figurative trademark may also constitute a position trademark. The requirement of actual use of the mark may be fulfilled even if the mark is used in combination with other elements. That the mark may appear with other figurative elements that possess an independent distinctive character and thus may be remembered by consumers does not undermine the distinctive character of the position trademark itself, so long as it is still perceived as indicating the origin of the goods.
It should be added that the current form for filing trademark applications with EUIPO allows the applicant to indicate that it is seeking protection for a position trademark, thus allowing doubts as to the nature of the trademark to be resolved at the registration stage.
Marzena Białasik-Kendzior, Intellectual Property practice, Wardyński & Partners