Is use of a sign in commerce in a different form from how it was registered genuine use of that trade mark?

Adding to the increasingly abundant case law on unconventional EU trade marks (EUTMs), in a judgment (Case T-273/21) from October this year, the General Court found that use of a three-dimensional EUTM with additional figurative and word elements to how such sign was register did not alter the distinctive character of that mark. As a result, the registration could not be revoked due to non-use.

The contested three-dimensional EUTM as registered is the following:

The contested three-dimensional EUTM as used on the market is the following:

The General Court reasoned that the requirements that apply to verification of the genuine use of a mark, within the meaning of Article 18(1) of Regulation 2017/1001 (EUTMR), are analogous to those concerning the acquisition by a sign of distinctive character through use for the purpose of its registration, within the meaning of Article 7(3) EUTMR. Furthermore, the fact that the relevant public may have recognized the contested three-dimensional EUTM by referring to another mark which designated the same goods and was used in conjunction with the contested mark did not mean that that mark was not used as a means of identification in itself.

Since the mark in question possessed an average distinctive character (the shape of a baby’s bottle for goods such as sugar confectionery and candy), it was held that the figurative and word elements that covered the contested mark as used, even though they may have facilitated the determination of the commercial origin of the goods covered, did not alter the distinctive character of the contested mark for the purposes of point (a) of the second subparagraph of Article 18(1) EUTMR.

Background

In 2018, Mr Trebor Robert Bilkiewicz (the intervener) filed an application for revocation with the EUIPO, pursuant to Article 58(1)(a) EUTMR, of the above three-dimensional EUTM.

The goods covered by the contested mark were in Class 30 (confectionery, sugar confectionery, candy, sweets, and sherbet) of the Nice Classification.

In 2019, The Topps Company, Inc (the applicant) submitted evidence seeking to establish genuine use of the contested mark. In 2020, the Cancellation Division granted the application for revocation in respect of all the goods covered by the contested mark. The applicant appealed to the EUIPO Second Board of Appeal (the board), which subsequently dismissed the appeal since the mark had merged with the additional figurative and word elements and thus formed another sign.

The present analysis only concerns the applicant’s third plea in the subsequent appeal to the General Court, namely whether the combination of a three-dimensional mark with a figurative or word mark or with other elements, altered the distinctive character of that mark.

The General Court’s judgment

As a preliminary point, the General Court considered that, if it is possible to acquire trade mark protection for a sign through specific use made of that sign, then that same form of use must be also capable of ensuring that such protection is preserved. The requirements that apply to the verification of the genuine use of a mark are stipulated in Article 18(1) EUTMR and are analogous to those that apply to the acquisition by a sign of distinctive character within the meaning of Article 7(3) of that regulation.

According to case law, the acquisition of distinctive character may result from the use, as part of the registered trade mark, of an element thereof and from the use of a separate mark in conjunction with the registered trade mark. In those cases, it is sufficient that, in consequence of such use, the relevant class of persons actually perceive the goods or services, designated exclusively by the mark applied for, as originating from a particular undertaking.

Accordingly, a registered trade mark that is used only as part of a composite mark or in conjunction with another mark must continue to be perceived as indicative of the origin of the goods at issue for that use to be covered by the term ‘genuine use’ within the meaning of point (a) of the second subparagraph of Article 18(1) of the EUTMR.

Furthermore, the person applying for registration must prove that that mark alone, as opposed to any other trade mark which may also be present, identifies the particular undertaking from which the goods originate.

The Court of Justice of the European Union (CJEU) has also confirmed that a three-dimensional mark could be used in conjunction with a word element without necessarily calling into question the consumer’s perception of the form as indicative of the commercial origin of the goods (Klement v EUIPO, C-698/17 P, EU:C:2019:48).

The fact that the mark BIG BABY POP! may have facilitated the determination of the commercial origin of the candy in question was not at odds with the fact that it may not have altered the distinctive character of the three-dimensional mark consisting of the shape or the appearance of those goods for the purposes of point (a) of the second subparagraph of Article 18(1) EUTMR.

While it was true that, in the event of joint use of a three-dimensional mark with another mark, it may be easier to establish the alteration of the distinctive character of such a three-dimensional mark than the alteration of the distinctive character of a word or figurative mark, it was to be borne in mind that, in the relevant sector of sugar confectionery and candy, the combination of a three-dimensional form with additional word or figurative elements was relatively common.

In relation to the figurative and word elements included on the contested mark as used, the General Court noted that the mark BIG BABY POP!, although it did indeed occupy a significant portion of the surface of the product, alluded to the baby’s bottle shape which the contested mark consisted of. The stylised letter ‘i’ in the shape of a baby’s bottle recalled that shape, and the word ‘baby’ referred to users of babies’ bottles.

In the light of the foregoing and by taking into account the average distinctive character of the contested mark, the General Court concluded that the figurative and word elements that cover the contested mark as used, even though they facilitated the determination of the commercial origin of the goods covered, did not alter the distinctive character of the contested mark and did not call into question the fact that their addition may be regarded as having given rise to use of that mark in an acceptable variant.

Comment

The judgment further elaborates on the vexed issue of what constitutes genuine use of a trade mark. Importantly, it clarifies that the requirements that apply to verification of genuine use of three-dimensional trade marks, within the meaning of Article 18(1) EUTMR, are analogous to those concerning the acquisition by a sign of distinctive character through use for the purpose of its registration, within the meaning of Article 7(3) of that regulation.