Genuine use and the principle of permissible alterations

Using a trade mark in its registered form is the safest way to establish genuine use, should it become necessary. However, brands develop over time and their presentation can change, the key driver usually being updating of the sign. Using the mark in a form differing from the registered sign is sufficient under EU law if such use does not alter the distinctive character of the registered sign (Art. 18(1)(a) of Regulation 2017/1001).

In the judgment discussed below, the General Court dealt with the question whether a graphic stylisation of a word mark influences its distinctive character (Case T-372/21).

Background

The applicant, Sympatex Technologies, filed for the EU word mark Sympathy Inside covering goods and services in Classes 25 and 35, including ‘clothing, footwear, headgear’ and corresponding retail and wholesale services. The opponent, Liwe Española, filed an opposition based on its EU trade mark INSIDE., registered mostly for similar goods and services.

Sympatex requested Liwe to prove genuine use of its earlier mark. Liwe submitted evidence, which showed use in the following configurations:

The Opposition Division of EUIPO deemed this use to be sufficient to establish genuine use for ‘clothing, footwear, headgear’. It upheld the opposition for most of the registered goods and services. The Board of Appeal agreed with the Opposition Division. Sympatex appealed to the General Court.

The General Court’s decision

Before dealing with the likelihood of confusion, the Court reviewed the question of whether the use of the earlier mark INSIDE. in the configurations shown above alters its distinctive character within the meaning of Art. 18(1)(a) of Regulation 2017/1001. According to case law, there is no alteration where the sign as used differs from the registered form only in negligible elements, so that the relevant public regards the two signs as broadly equivalent. This assessment requires an examination of the distinctive and dominant character of all the elements of the sign as used and as registered.

The configurations of the earlier mark omit the full stop at the end of the sign and add graphic stylisation. The General Court regarded the missing full stop as irrelevant. It was considered to occupy a secondary position in relation to the word element ‘INSIDE’, be hardly noticeable, and have no distinctive character. Therefore, the Court deemed the absence of the full stop as not altering the distinctive character of Liwe's trade mark.

In assessing the impact of the graphic stylisations, the judges emphasized that the earlier mark is a word mark. A word mark is a mark consisting entirely of letters, words, or associations of words, written in printed characters in normal font, without any specific graphic element. The subject matter of protection is the word as such. The court referred to its previous case law, which held that the specific graphic representation of a word mark does generally not alter the distinctive character.

The Court found that both configurations of the registered mark reproduce the dominant and distinctive word “INSIDE”. The judges deemed the figurative elements to have a purely decorative function, not playing a significant role in the overall impression of the sign, and not having any inherent semantic content of their own that would lend the mark distinctive character.

The argument that the graphics allowed the earlier mark to be perceived as two separate words ‘IN’ and ‘SIDE’, was rejected. The judges held that all the letters of the earlier mark are placed on the same line, without a space, forming a single word in the same size, and with the same font, so that the graphic representations in question, viewed as a whole, would be understood as being composed of the single word ‘INSIDE’.

Consequently, the Court held that the forms of use shown above do not alter the distinctive character of the registered sign.

Turning to the likelihood of confusion, the Court confirmed that the relevant goods and services of both marks are identical or at least similar.

As regards the distinctive and dominant elements of the marks at issue, the Court found that the contested application Sympathy Inside is distinctive to an average degree. Neither ‘Sympathy’ nor ‘Inside’ have, according to the judges, a directly descriptive meaning for the goods and services at issue. Likewise, the Court considered the element ‘INSIDE’ to be the distinctive and dominant element of the earlier mark INSIDE.

The Court agreed with the Board of Appeal that the signs are visually and phonetically similar to a low degree because of the common element ‘inside’. For the English-speaking part of the relevant public, the signs would also be conceptually similar (although the Court did not indicate to what degree).

Due to intensive use of the earlier mark for ‘clothing, footwear, headgear’ in Spain, the Court agreed with the Board of Appeal that Liwe proved an enhanced degree of distinctiveness of the earlier mark.

Ultimately, the Court confirmed a likelihood of confusion. Sub-brands are frequently used in the clothing sector, and the contested application could be perceived as a sub-brand of the earlier mark.

Comment

The Court’s decision raises several interesting questions.

First, stating that INSIDE. is a word mark as defined by the case law (“a mark consisting entirely of letters, of words or of associations of words […]”, see also the definition in Art. 3(3)(a) of Regulation 2018/626) can be challenged. Punctuation marks are not letters or words. The full stop in the end of the sign seems arbitrary. ‘INSIDE’ is not a sentence that requires a full stop. Accepting such signs as word marks begs the question where to draw the line between word marks and figurative marks: The mark SO…? is considered to be a word mark and inherently distinctive (T-197/21), even though it consists of more punctuation signs than letters. So… would the following also constitute a word mark?--

/\w/\
( . . . )

It is made up entirely of the letter ‘w’ and (partly underlined) punctuation marks.

Second, you could make the argument that ‘INSIDE’ is, if not descriptive, at least weakly distinctive for clothing, headgear and footwear. The term can indicate the purpose of these goods, namely to be worn indoors (in contrast to outdoor clothing). An alteration of the distinctive character of weakly distinctive marks is accepted much easier than for averagely distinctive signs (see e.g. T-323/21 at para. 21).

Third, the circles around the element ‘IN’ of the used forms highlight this element and separate it from the word ‘SIDE’. The circles also create a larger space between the letters ‘IN’ and ‘SIDE’. ‘Splitting’ a single (and arguably a weakly distinctive) word like ‘INSIDE’ graphically into two words ‘IN’ and ‘SIDE’, each of which has a separate meaning, can arguably be considered to alter the distinctive character. This may be why Liwe also registered these versions as EU trade marks (No. 003973153 and No. 005721337).