EU General Court provides Noah with ark to escape non-use cancellation

In a recent decision (T-562/22) on genuine use of a registered EU trade mark in respect of clothing, the General Court of the European Union (the Court) found that use in a slightly altered form (adding a "Y" in capitals) still constituted genuine use of the mark as registered. 

Background

In 2008, Yannick Noah, a French former tennis player, registered the following figurative sign (the Mark) as a European Union trade mark (EUTM), in respect of a number of categories of goods, including leather goods, clothing, games and playthings (the Registration): 

In 2019, Noah Clothing LLC, a clothing company based in the United States, filed an application with the European Union Intellectual Property Office (EUIPO) seeking revocation of the Registration, pursuant to Article 58(1)(a) of EU Regulation 2017/1001 (EUTMR), on the ground that it had not been put to genuine use in the European Union within a continuous period of five years for all of the goods at issue. 

In July 2022, following an appeal, the EUIPO's Board of Appeal eventually revoked the Registration in respect of all the goods at issue, with the exception of ‘polo shirts’ and ‘sweaters’, finding that the evidence produced by Mr Noah showed genuine use of the Mark in the European Union during the relevant period.

Noah Clothing appealed to the Court, seeking that the Registration also be revoked in respect of ‘polo shirts’ and ‘sweaters’.

The Court's ruling

The grounds of Noah Clothing's appeal were the following: 

1. Firstly, that Noah Clothing's right to a fair trial and to be heard had been infringed because Mr Noah was allowed to adduce further evidence after the relevant deadline had passed; 
2. That the Mark had not been put to genuine use in respect of ‘polo shirts’ and ‘sweaters’ in class 25 because Mr Noah had instead marketed these products using the following mark (the Second Mark): 
   
3. Thirdly,  lack of genuine use of the mark at issue for the goods ‘sport casual shirts’ in Class 25, in connection with the cross-appeal.

Right to a fair trial / late evidence

The Court began by noting that, pursuant to Article 95(2) EUTMR, the EUIPO "may disregard facts or evidence which are not submitted in due time by the parties concerned", and that this provision, by use of the word "may" grants the EUIPO a broad discretion as to whether or not to take late evidence into account. 

Further, the Court stated that it is an established principle of settled case-law that, as a general rule, the submission of facts and evidence by the parties remains possible after the expiry of the relevant time limits, and the EUIPO is not prohibited from taking account of such facts and evidence (mobile.de v EUIPO, C‑418/16 P).

In this case, it was accepted by both parties that Mr Noah had submitted the first evidence of use of the Mark within the time limit set by the EUIPO, and in the Court's view the further evidence submitted after the deadline was complementary to the first set of evidence and responsive to Noah Clothing's observations disputing such evidence; the EUIPO's Board of Appeal was consequently entitled to take it into consideration. 

Further, Noah Clothing's allegation of infringement of its right to be heard, on the basis that it had not been provided with the opportunity to comment on the late-submitted evidence, was also rejected by the Court, finding that Noah Clothing has indeed been able to comment on such evidence in its observations on the appeal and cross-appeal. 

The first ground of appeal was dismissed accordingly. 

Kat doesn't mind who made the sweater as long as it's warm... 

Photo: Eli Duke

Lack of genuine use

Moving to genuine use, the crux of Noah Clothing's argument related to the fact that the majority of the pictures shown in Mr Noah's evidence seeking to show genuine use of the Mark, showed goods bearing the Second Mark instead. 

Pursuant to Article 18(1) EUTMR, genuine use of an EU trade mark can still be achieved through use of the mark in a different form, so long as it only differs in elements which do not alter the distinctive character of the mark in the form in which it was registered.

Noah Clothing's position was that the addition of the upper-case letter "Y" followed by a full stop (as shown in the Second Mark) altered the distinctive character of the Mark for the purposes of Article 18(1) EUTMR. In particular, Noah Clothing alleged that the word element "Y. Noah" clearly refers to Mr Noah, unlike the word element "NOAH" in the Mark, which might refer both to a surname and to a given name.

Noah Clothing referred, in support of this argument, to a previous decision of the EUIPO which had found that the omission of the element YANNICK from the word mark YANNICK NOAH significantly altered the distinctive character of the latter. 

The Court began by noting that, in order to assess whether the distinctive character of the Mark had been altered, it needed to carry out an assessment of the distinctive and dominant character of the added elements, based of the intrinsic qualities of each of those elements, as well as of the relative position of the various elements within the arrangement of the mark (Lidl Stiftung v EUIPO – Plásticos Hidrosolubles (green cycles), T‑78/19).

It found, in this regard, that the additional upper-case letter ‘Y’ followed by a full stop before the word ‘noah’ was merely a repetition of an element already present in the figurative element of the Mark and, as it was placed below such figurative element, which dominated the overall impression of both marks , in conjunction with the word "NOAH", it occupied a secondary (albeit not negligible) position in the perception of Mark.

Further, the Court held that the use of signs consisting of surnames is common in the clothing sector (Caventa v OHIM – Anson’s Herrenhaus (B BERG), T‑631/11), so the word element "NOAH" may be perceived, in both marks, as a surname that refers to a specific person (i.e. Mr Noah), and the addition of the first letter of his given name merely reinforces this reference. 

The Court therefore rejected this ground of appeal on the basis that the addition of the upper-case letter "Y" to the Mark did not alter its distinctive character. 

Other grounds of appeal

In respect of the remaining, less salient, points of the appeal, the Court found as follows: 

• "sleeveless vests" cannot constitute an independent subcategory of "sweaters" in class 25, as the absence of sleeves does not alter either the purpose or the intended use of the relevant goods; 
• the assessment of genuine use does not need to be based on each item of evidence, considered in isolation, but on an overall assessment of all the evidence made available; 
• regarding the amounts of revenues from sales, even minimal use can be sufficient to be classified as genuine, provided that it is regarded as warranted, in the relevant economic sector, as a means of maintaining or creating market share for the goods or services protected by the mark in question;  
• the EU judicature must rule on the basis of evidence freely and actually produced by the parties, and not by drawing conclusions from the failure to produce a specific piece of evidence; and
• the use of the words "sport casual shirts" by the EUIPO's Cancellation Division corresponds to the use of the word "polo shirts" by the Board of Appeal.

Noah Clothing's appeal was therefore dismissed in its entirety. 

Comment

This decision, which seems correct to this Kat, will provide some reassurance to brand owners who might not always think it is worth the time and cost to go through an extensive re-filing programme when a slightly updated version of a logo is being used on products. That said, it would appear sensible to do so particularly in cases such as this, where companies operate in the same sector with similar marks, and so the chances of a claim are heightened.