Genuine use of three dimensional EU trade marks - heated arguments over ovens

Registered mark

In 2004, the German company Bullerjan GmbH applied for the shape depicted on the right as EU trade mark (or Community trade mark, as it was then) for ovens (stoves). In 2005, the mark was registered.

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.]

Actual use

The General Court in its judgment of 24 September 2015 (EU:T:2015:688) reminded everybody that genuine use required use that served the main function of the mark, namely identification of source (with reference to EU:T:2004:225). Genuine use did not require use in isolation of the registered sign (with reference to EU:C:2005:432). However, a registered mark that was used in connection with another sign must still be perceived as indication of origin (EU:C:2013:253 - Colloseum Holding). The joined use must further not affect the distinctive character of the registered mark (EU:T:2005:438 - CRISTAL CASTELLBLANCH). This required taking into account both the distinctiveness of the added element(s) (EU:T:2014:119 - PALMA MULATA) as well as the distinctiveness of the registered mark. The weaker the distinctiveness of the registered mark, the more readily it was affected by the addition of a distinctive element (para. 33).

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

It was primarily this last statement the Court of Justice took issue with. It held, in essence, that it was contradictory to consider the "Bullerjan" oven's shape "unusual" and highly distinctive when there were similar shapes on the market. The degree of distinctiveness of the registered mark was highly relevant when assessing whether it was affected by the addition of other distinctive elements (with reference to EU:C:2016:642 - Lotte/EUIPO, para. 30 - only available in French and German). The case was sent back to the General Court to re-assess why the shape of the registered mark was perceived as an indication of origin and not merely as the functional appearance of the goods claimed given the existence of similar shapes on the market.

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.