How do you cancel degenerated trade marks?

It happens that sometimes trade marks get registered although they are non-distinctive. Both the EU Trade Mark Regulation and Directive provide for invalidity actions to cancel such marks upon request of any third party. However, if the trade mark has been registered for an extended period of time, it may be difficult for the invalidity applicant to find sufficient evidence showing that the trade mark was perceived as a non-distinctive term on the filing date. Similarly, there are also registered marks that were distinctive initially but have become descriptive. How do you cancel such marks?

For changes occurring subsequent to the filing date, EU law provides three grounds for revocation of individual marks: (1) Non-use within a consecutive period of five years (if the trade mark has been registered for more than five years); (2) the trade mark has become the common name for the goods and services due to acts or inactivity of the owner; or (3) the trade mark has become deceptive because of its use by the owner or an authorized third party (Art. 19 and 20 of Directive (EU) 2015/2436 and Art. 58(1) of Regulation (EU) 2017/1001). Which of these options do you choose to cancel a mark that has become non-distinctive after the filing date and how do these grounds interact?

The Black Friday trade mark

A good example is the German trade mark ‘Black Friday’. As fellow Kat Anastasiia Kyrylenko reported here, this sign was found to be distinctive for various goods and services in Nice Classes 9, 35 and 41 at the filing date back in 2013. There was not sufficient evidence that it would develop into a descriptive term, namely a catchphrase for a discount campaign day.

As you can imagine, many traders were not too happy about the trade mark and so a revocation action based on non-use was filed by the operator of the website www.blackfriday.de in 2020 before the District Court of Berlin (52 O 320/19). The relevant period to establish genuine use was 2015 to 2020. The owner, Super Union Holdings Limited, provided evidence of use for several services in Nice Class 35, including ‘retail services via the Internet in the fields of: cosmetics’, starting with use by a licensee in October 2016. The District Court revoked the ‘Black Friday’ trade mark.

The Higher Regional Court of Berlin (5 U 46/21) confirmed the revocation due to non-use for all goods and services. It reasoned that the evidence did not show ‘Black Friday’ being used as an indication of origin.

According to the judgment, the sign developed into a descriptive term and was understood as a catchphrase for a discount campaign day at the latest in October 2016. Since all the evidence of the owner only showed use of ‘Black Friday’ as a reference to such a discount campaign day, the Court concluded that the trade mark was descriptive, rather than being perceived as an indication of origin.

The Court did not consider it relevant that ‘Black Friday’ was also used with the ® logo. While it agreed with the case law of the German Supreme Court that the ® indicates the existence of trade mark protection, it argued that this fact alone does not change the consumer’s perception of the descriptive meaning of ‘Black Friday’ when it is used in connection with a discount campaign day.

Comment

The correctness of this decision can be questioned for two principal reasons:

First, the ground that appears most ‘suitable’ with respect to the ‘Black Friday’ trade mark is that it has become the common name for the registered goods or services (Art. 20(a) of Directive (EU) 2015/2436 and Art. 58(1)(c) of Regulation (EU) 2017/1001). The conditions of this ground are, however, rather strict. It only applies to marks that have become the ‘common name’ for the relevant goods and services. It is debatable whether ‘Black Friday’ is perceived as such a common name, e.g., for ‘retail services via the Internet in the fields of: cosmetics’. The ground also requires the change of the public’s perception to be the “result of acts or inactivity of the proprietor”.

The essential question is: Can you circumvent the rather strict conditions for the ‘common name’ revocation ground by filing a revocation application based on non-use? Or asked from a slightly different angle: Would the Higher Regional Court’s decision render the ‘common name’ revocation superfluous for trade marks that are no longer within the five year grace period for non-use?

The second reason is based on case law of the General Court. In its judgment hyphen v EUIPO - Skylotec (Représentation d'un polygone) concerning revocation proceedings due to non-use, the General Court held: --

[…] [I]t is necessary to acknowledge a certain degree of distinctiveness of an earlier registered mark. It follows that the earlier trade mark cannot be found to be generic, descriptive or devoid of any distinctive character, without calling into question its validity in revocation proceedings, which would give rise to an infringement of Article 8(1)(b) of Regulation No 207/2009 (see, to that effect, judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraphs 47, 51 and 52).

Is arguing that a trade mark in revocation proceedings has become non-distinctive consistent with this line of case law? From a formal point of view one could argue that the Higher Regional Court’s decision did not deny the initial distinctiveness of ‘Black Friday’. However, the General Court’s case law does not distinguish between an initial and subsequent lack of distinctiveness. Such a distinction could also lead to the seemingly anomalous result that trade marks, which lacked distinctive character on the filing date, could not be revoked due to non-use for their lack of distinctiveness, while those, which became non-distinctive only after filing, could be so revoked.

The ‘Black Friday’ case would have been a good opportunity for a reference to the CJEU for a preliminary ruling in order to bring clarity to the interplay of the different grounds for revocation. A pity that there was no such reference.

Picture is by Tyagadipta Biswal and is used under licensing terms of Pexels.