MAN v Rolls-Royce – How not to advertise your mark

John Wanamaker famously said

Half the money I spend on advertising is wasted; the trouble is I don’t know which half.

I cannot help you with this either, but based on the General Court’s recent decision in MAN Truck & Bus v EUIPO (Case T-108/25), it is not wise to spend money on advertising explaining the descriptive character of your own trademark.

Background

MAN Truck & Bus SE (“MAN”) obtained registration of the EU word mark “V12X” for “engines and motors, for use in the following fields: boats, ships, stationary applications, and parts of motors and engines and replacement parts for the motors and engines” in May 2022.

In December 2022, Rolls-Royce Power Systems AG (Rolls-Royce) filed an invalidity application, arguing that the mark was both devoid of distinctive character and descriptive (Art. 7(1)(b) and (c) EUTMR).

The Cancellation Division of the European Union Intellectual Property Office (“EUIPO”) rejected the invalidity application. On appeal, the EUIPO’s Board of Appeal (“BoA”) reversed the decision and declared the mark invalid in its entirety. The BoA found that the relevant public would perceive “V12X” as a reference to high-quality and high-performance marine engines with twelve cylinders in a V-configuration. MAN was not happy and brought an action before the General Court.

The General Court's decision

The General Court dismissed the action.

1. Admissibility of Evidence

a. MAN challenged the admissibility of evidence submitted by Rolls-Royce, arguing that the screenshots and links to websites submitted by Rolls-Royce before the EUIPO were unsuitable as evidence under Art. 97(1) EUTMR.

The Court recalled that the EUTMR does not prescribe the form of evidence. Art. 97(1) EUTMR provides a non-exhaustive list of admissible evidence. Thus, the parties may choose the evidence they wish to submit freely and neither the EUIPO nor the BoA may reject specific types of evidence from the outset.

The judges added that the mere possibility that website content could have been manipulated is insufficient to question the credibility of screenshots. The party challenging such evidence must demonstrate credible and specific circumstances indicating manipulation or falsification. MAN had failed to do so.

The fact that a URL does not exist anymore or that the website’s content has been changed does not cast doubt on the credibility of the screenshot showing the website in its previous form.

b. MAN also argued that the evidence submitted for the first time before the BoA was inadmissible. The Court confirmed that the BoA had correctly exercised its discretion under Art. 95(2) EUTMR and Art. 27(4) EUTMDR. The late-filed evidence was prima facie relevant, supplemented the evidence already on file and responded, inter alia, to the EUIPO’s criticism that the descriptive character of the element “X” had not been sufficiently demonstrated.

2. Descriptive Character of “V12X”

a. The Court confirmed that the relevant public consisted, inter alia, of professionals with particular expertise and knowledge of marine engines. This and their high level of attention do, however, not have an impact on the assessment of absolute grounds. A few paragraphs later, the judges noted that the high level of attention allows professionals to grasp the descriptive character of a sign more easily.

b. The judges also confirmed that the relevant public would consider the element “V12” to be descriptive for marine engines. It was deemed a well-known fact that “V12” designates an engine with twelve cylinders in a V-configuration. Rolls-Royce had submitted ample evidence demonstrating that this meaning was common knowledge in the marine engine sector, including technical data sheets from MAN itself, Caterpillar and Mercury as well as articles from trade magazines.

c. The more interesting question was whether the element “X” is also descriptive. The Court found that it is, based primarily on MAN’s own marketing materials.

MAN’s website explained that the “X” in “V12X” stands for: 

• the neXt generation of MAN engines;
• eXtra displacement (30 litres); and
• eXcellent power-to-weight ratio.

The Court held that where a trade mark owner itself attributes a descriptive meaning to a sign, this constitutes strong evidence that the relevant public will perceive the sign in the same manner. This finding was corroborated by the common practice in the marine engine market of combining the designation “V12” with numbers or letters to indicate engine performance (e.g. “V12-1550” for an engine with 1,550 horsepower).

The German Wiktionary entry defining “X” as a symbol for “extra” was admitted as supplementary evidence. Even though Wikipedia entries are, in themselves, unreliable because they may be altered at any time by anyone, they can support other items of evidence submitted by Rolls-Royce.

d. The Court held that the combination “V12X” does not create a new meaning independent of or going beyond its individual elements. The juxtaposition of “V12” and “X” corresponds to the customary practices in the relevant market, where engine designations commonly combine type information with performance indicators. The professional public would perceive the descriptive character more easily because of its increased level of attention.

e. Finally, the Court noted that “V12” constitutes 75% of the sign and appears at its beginning, meaning that the clearly descriptive character of this element will attract the attention of the relevant public more than the letter “X”.

3. Property Rights

MAN argued that the invalidation of the mark constituted an unjustified expropriation under Art. 17 of the Charter of Fundamental Rights. The Court dismissed this argument, noting that the protection of intellectual property rights is not absolute. EU trade marks exist within the boundaries drawn by Artt. 4, 7 and 8 EUTMR. Where the conditions for applying an absolute ground for invalidity are met, the EUIPO has no discretion but must declare the mark invalid. 

Comment

The key takeaways from the decision:

1. Beware what your company/your client says in marketing materials. MAN’s own promotional materials were used against it. By explaining that “X” stood for “neXt generation”, “eXtra displacement” and “eXcellent power-to-weight ratio”, MAN effectively provided Rolls-Royce with proof that the sign was descriptive. The case is, however, rather an exception. Usually, the EUIPO, BoA and the General Court discard such evidence because it does not show that a significant part of the relevant public is aware of this meaning.

2. If you wish to save your trade mark from being found descriptive, do not argue a high level of attention. This may backfire because highly attentive consumers are more likely to identify the descriptive meaning.

3. Wikipedia is still considered an unreliable source. Rather than quoting from Wikipedia, it is advisable to rely on the sources cited in the Wikipedia article.