Judgments nº T-68/16 of Tribunal General de la Unión Europea, January 17, 2018

• Resolution Date: January 17, 2018
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-68/16

(EU trade mark - Revocation proceedings - Figurative mark representing a cross on the side of a sports shoe - Position mark - Genuine use of the mark - Articles 15(1) and 51(1)(a) of Regulation (EC) No 207/2009 (now Articles 18(1) and 58(1)(a) of Regulation (EU) 2017/1001))

In Case T-68/16,

Deichmann SE, established in Essen (Germany), represented by C. Onken, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Munich, SL, established in Capellades (Spain), represented by J. Güell Serra and M. del Mar Guix Vilanova, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 4 December 2015 (Case R 2345/2014-4), relating to revocation proceedings between Deichman and Munich,

THE GENERAL COURT (Fourth Chamber),

composed of H. Kanninen, President, J. Schwarcz (Rapporteur) and C. Iliopoulos, Judges,

Registrar: X. Lopez Bancalari, Administrator,

having regard to the application lodged at the Court Registry on 15 February 2016,

having regard to the response of EUIPO lodged at the Court Registry on 11 April 2016,

having regard to the response of the intervener lodged at the Court Registry on 29 July 2016,

further to the hearing on 27 June 2017,

gives the following

Judgment

Background to the dispute

1 On 6 November 2002, the intervener, Munich SL, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 The figurative mark for which registration was sought was represented as follows:

3 The goods in respect of which registration was sought are in Class 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Sports footwear’.

4 The mark was registered on 24 March 2004 under number 2923852.

5 In infringement proceedings brought by the intervener before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany) against the applicant, Deichmann SE, the latter filed a counterclaim on 29 June 2010 under Articles 100(1), 51(1)(a) and 52(1)(a) of Regulation No 207/2009 (now Articles 128(1), 58(1)(a) and 59(1)(a) of Regulation 2017/1001). The Landgericht Düsseldorf (Regional Court, Düsseldorf) duly notified EUIPO of the counterclaim and that information was recorded in the register of EU marks, in accordance with Article 100(4) of Regulation No 207/2009 (now Article 128(4) of Regulation 2017/1001). On 26 October 2010, the Landgericht Düsseldorf (Regional Court, Düsseldorf) decided to stay the infringement proceedings pursuant to Article 100(7) of Regulation No 207/2009 (now Article 128(7) of Regulation 2017/1001) and requested that the applicant submit an application to EUIPO for revocation and for a declaration of invalidity within a period of three months.

6 On 26 January 2011, the applicant filed an application with EUIPO for the revocation of the mark at issue pursuant to Article 51(1)(a) of Regulation No 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, in particular during the five-year period preceding the date of the applicant’s counterclaim (Case 5141 C, being the subject matter of the present action). In addition, on the same day, the applicant filed an application with EUIPO for a declaration of invalidity of the mark at issue on absolute grounds, on the basis of Article 52(1)(a) of Regulation No 207/2009 (Case 5143 C).

7 On 31 January 2011, EUIPO invited the intervener to submit evidence of use of the mark at issue. On 28 April 2011, the intervener submitted a body of evidence of use. This included, in a first annex, invoices dated between 26 January 2006 and 26 January 2011, issued by Berneda SA, which is an undertaking affiliated to the intervener and authorised by it to use the mark at issue. Those invoices were addressed to customers in various Member States and referred to the numbers of specific shoe models. Tables were included by the intervener for each Member State, linking the model numbers of shoes sold to the corresponding catalogue entries, in a second annex. That annex concerned general and seasonal catalogues from 2006 to 2011, showing photographs of shoes whose model numbers corresponded to those in the invoices set out in the first annex. The intervener stated that it understood the relevant period to be the five-year period preceding the date of the application to EUIPO for revocation. However, should EUIPO consider the relevant period to be the five-year period preceding the date of filing of the counterclaim before the Landgericht Düsseldorf (Regional Court, Düsseldorf), the intervener maintained that it could file additional documents showing use of the mark at issue for the period from 29 June 2005 to 26 January 2006. On 29 April 2011, the intervener again produced a table, of six pages, cross-referencing each of the invoices and shoe models sold with the model number set out in the catalogues in the second annex, referred to above, in respect of some additional invoices issued by Berneda, and relating to the period from 25 August 2009 to 26 January 2011.

8 On 25 June 2014, the intervener stated, ‘as a precaution’, that it also relied upon documents it had filed with EUIPO in other proceedings, to which it referred.

9 By decision of 7 August 2014, the Cancellation Division upheld the application for revocation, revoked the mark at issue with effect from 26 January 2011 and ordered the intervener to pay the costs. In essence, it held that the evidence adduced had not enabled it to find that there was genuine use of that mark during the relevant period, which it considered, without explaining the reason for that view, to be the five-year period immediately preceding the date of filing of the application for revocation before EUIPO. In particular, the Cancellation Division took the view that the evidence adduced concerned use of forms which differed from the mark at issue in respect of elements which altered the distinctive character, within the meaning of Article 15(1)(a) of Regulation No 207/2009 (now Article 18(1) of Regulation No 2017/1001).

10 On 10 September 2014, the intervener filed a notice of appeal against the decision of the Cancellation Division.

11 By decision of 4 December 2015 (‘the contested decision’), the Fourth Board of Appeal of EUIPO annulled the decision of the Cancellation Division and rejected the application for revocation. In essence, the Board found that the evidence of use showed use of the mark at issue for ‘sports footwear’ in Class 25 for the relevant period, which it defined as the five years preceding the date of filing the counterclaim, in other words, the period from 29 June 2005 to 28 June 2010 (‘the relevant period’).

12 In particular, concerning the character of the mark at issue, the Board of Appeal, after observing that it consisted in the graphic representation as shown in paragraph 2 above and after describing it in detail, held that ‘as it [was] this graphic representation which defin[ed] the mark, ... whether the mark [was] a position mark or a figurative mark [was] irrelevant’. In reality, according to the Board of Appeal, position 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. The decisive factor for the scope of protection of the mark is not the categorisation of the sign in question as a figurative, three-dimensional or position sign but the way in which the mark will be perceived by the relevant public in relation to the goods concerned. That way of perceiving the mark is liable to be influenced only by the nature of the sign as registered. According to the Board of Appeal, the mark at issue ‘is designed to protect a specific cross-shaped pattern placed on a specific part of the surface of the designated product, namely, a sports shoe’. The Board of Appeal found that the mark at issue was indistinguishable from the form of a part of that product, namely, the upper of a sports shoe.

13 Next, the Board of Appeal carried out an analysis of the evidence adduced by the intervener, consisting, inter alia, of a large number of invoices and product catalogues, concluding, in essence, that on the whole it showed genuine use of the mark at issue, that is, its real commercial exploitation as regards the extent, duration, geographical scale and nature of use. In that last regard, the Board of Appeal held that the Cancellation Division’s finding that the images in the numerous catalogues submitted by the intervener showed different types of sports shoes bearing various crossed lines altering the distinctive character of the mark at issue could not be endorsed. On the contrary, according to the Board of Appeal, the differences between the mark as used and the mark at issue were ‘negligible ... barely noticeable if at all’. The Board of Appeal held that, in the circumstances of the present case, it could also take into consideration, in order to establish genuine use of the mark at issue, the elements in colour, notwithstanding the fact that the mark had been registered in black and white.

14 Lastly, the Board of Appeal referred...