In 2012, plaintiff Toni Klement filed an action for cancellation of the mark for lack of genuine use. Klement's principal argument is that the mark was always used in connection with the sign "Bullerjan" affixed to the front of the oven (see image below). Klement lost both before the EU IPO and the General Court, but the Court of Justice on 1 December 2016 reversed the General Court's judgment (EU:C:2016:918). Since the order is only available in German and French, the following provides a brief summary for the English speaking public.
Article 15 EU Trade Mark Regulation (207/2009) reads
1. If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.
The following shall also constitute use within the meaning of the first subparagraph:
(a) use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered [...]
[Note that the wording has been amended by Regulation (EU) 2015/2424, but the above is the relevant version for this case.]
With regards to the case at issue, the General Court held that the shape of the oven as registered was unusual, reminding of an aircraft engine rather than a stove, and highly distinctive, despite its functionality and "notwithstanding that other manufacturers sold ovens under the word marks Bruno and Bulder that have a very similar shape, because this may be because these manufacturers want to achieve a certain technical effect, namely heat exchange by convection" (para. 39).
|Competitor's "Bruno" oven|
The case leaves me somewhat puzzled. The reasoning of the General Court seems indeed unconvincing. But if the shape of the "Bullerjan" oven was highly distinctive when registered - and that seems to be the case to me at least, functionality notwithstanding - then why has the trade mark owner tolerated the use of similar shapes by its competitors? Unless there are good reasons for it which escape me, the case serves as a reminder that registering a mark is only part of the game. You also need to enforce your mark, or you risk losing it.