JUDGMENT OF THE GENERAL COURT (Second Chamber)
24 September 2025 (*)
( EU trade mark – Revocation proceedings – International registration designating the European Union – Figurative mark representing two chevrons pointing to the right – Genuine use of the mark – Article 18(1)(a) and Article 58(1)(a) of Regulation (EU) 2017/1001 – Nature of use of the mark – Form differing in elements that do not alter the distinctive character of the mark )
In Case T‑31/24,
Barry’s Bootcamp Holdings LLC, established in Miami, Florida (United States), represented by M. Hawkins, T. Dolde and C. Zimmer, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by R. Raponi, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Hummel Holding A/S, established in Aarhus (Denmark), represented by T. Bösling and I. George, lawyers,
THE GENERAL COURT (Second Chamber),
composed, at the time of the deliberations, of A. Marcoulli, President, J. Schwarcz (Rapporteur) and L. Spangsberg Grønfeldt, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 9 January 2025,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Barry’s Bootcamp Holdings LLC, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 7 November 2023 (Case R 1424/2022‑2) (‘the contested decision’).
Background to the dispute
2        On 26 October 2005, the intervener, Hummel Holding A/S, obtained, from the World Intellectual Property Organization (WIPO), an international registration designating the European Union for the following figurative sign:
3        On 11 May 2006, EUIPO received notification of the abovementioned international registration, pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
4        The goods designated by the international registration were in Classes 3, 18 and 25 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponded, for each of those classes, to the following description:
–        Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’;
–        Class 18: ‘Leather and imitations of leather and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery, bags including bags for sports, toilet kits and toilet bags, rucksacks and cases (not included in other classes)’;
–        Class 25: ‘Clothing, footwear, headgear; sports clothing, footwear and headgear; leisure clothing, footwear and headgear; business clothing, footwear and headgear; fashion clothing, footwear and headgear’.
5        On 13 May 2019, the applicant filed with EUIPO an application for revocation of the international registration pursuant to Article 58(1)(a) of Regulation 2017/1001 in respect of all the goods referred to in paragraph 4 above.
6        On 25 June 2022, the Cancellation Division upheld the application for revocation in part on the ground that the extent of use of the contested international registration had not been sufficiently demonstrated for the goods in Classes 3 and 18 and for the following goods in Class 25: ‘Clothing, footwear except sports footwear, leisure footwear; fashion footwear; headgear; sports clothing and headgear; leisure clothing and headgear; business clothing, footwear and headgear; fashion clothing and headgear’.
7        The Cancellation Division also found that the contested international registration remained valid for the remaining goods in Class 25 corresponding to the following description: ‘footwear, namely sports footwear, leisure footwear; fashion footwear; sports footwear; leisure footwear; fashion footwear’ (‘the goods at issue’).
8        On 1 August 2022, the applicant lodged an appeal before EUIPO against the decision of the Cancellation Division in so far as the latter had dismissed the application for revocation.
9        On 10 January 2023, the intervener submitted its response and, on 25 January 2023, it brought a cross-claim against the decision of the Cancellation Division.
10      By the contested decision, first, the Board of Appeal dismissed the cross-claim as inadmissible. Secondly, as regards the main action, the Board of Appeal held that the contested international registration appeared in the evidence filed by the intervener in the registered form or in forms that do not alter its distinctive character.
The Board of Appeal also held that the invoices supplied by the intervener, read in conjunction with the intervener’s product catalogues, demonstrated that, over the relevant period, namely 13 May 2014 to 12 May 2019, dozens of pairs of leisure or sports shoes had been sold in several Member States, bearing the contested international registration, in its registered form or in forms not altering its distinctive character. In essence, the Board of Appeal held that that evidence was sufficient to prove use of the contested international registration as an indicator of commercial origin for the goods at issue. The Board of Appeal therefore dismissed the main action and ordered the applicant to pay the costs.
Forms of order sought
11      The applicant claims, in essence, that the Court should:
–        annul the contested decision in so far as it dismissed its appeal;
–        order EUIPO and the intervener to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the appeal;
–        order the applicant to pay the costs in the event that an oral hearing is convened.
13      The intervener contends that the Court should:
–        dismiss the appeal;
–        order the applicant to pay the costs incurred before the Board of Appeal.
Law
14      In support of its action, the applicant relies on two pleas in law alleging, first, infringement of Article 94(1) of Regulation 2017/1001 and, secondly, infringement of Article 58(1)(a) thereof.
The first plea, alleging infringement of Article 94(1) of Regulation 2017/1001
15      The applicant submits that the Board of Appeal infringed the obligation to state reasons since, in the contested decision, it did not provide a statement of the reasons why it considered that the evidence filed by the intervener demonstrated genuine use of the contested international registration for the goods at issue. First, the applicant submits that the Board of Appeal failed to respond to its argument that, when the contested international registration is affixed to footwear in a manner identical to that of a position mark, the registration of which had previously been rejected in a decision handed down by the Fifth Board of Appeal on 15 February 2019 (Case R 2604/2017‑5), that use had been decorative and could not be regarded as use as a trade mark. Secondly, it alleges that the Board of Appeal did not set out its reasons for finding that the decorative use of the contested international registration could be regarded as use as a trade mark.
16      EUIPO, supported by the intervener, disputes the applicant’s arguments.
17      According to Article 94(1) of Regulation 2017/1001, decisions of EUIPO are to state the reasons on which they are based.
18      The duty to state reasons thus enshrined has the same scope as that deriving from Article 296 TFEU. It is settled case-law that the statement of reasons required by that article must set out clearly and unequivocally the reasoning of the author of the act, in order to enable interested parties to know the purported justification for the measure taken and to enable the EU judicature to exercise its power of review (see judgments of 11 December 2014, CEDC International v OHIM – Underberg (Shape of a blade of grass in a bottle), T‑235/12, EU:T:2014:1058, paragraph 42 and the case-law cited, and of 7 July 2021, Ardagh Metal Beverage Holdings v EUIPO (Combination of sounds on opening a can of soft drink), T‑668/19, EU:T:2021:420, paragraph 63 and the case-law cited).
19      The Board of Appeal is not obliged to express a view on every argument submitted by the parties. It is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision (see judgment of 29 November 2016, Chic Investments v EUIPO (eSMOKING WORLD), T‑617/15, not published, EU:T:2016:679, paragraph 102 and the case-law cited).
20      Furthermore, having regard to the continuity, in terms of their functions, between the Cancellation Division and the Board of Appeal, the statement of reasons for the Cancellation Division’s decision forms part of the context in which the contested decision was adopted, which is known to the applicant and enables the EU judicature to carry out fully its judicial review (see, to that effect and by analogy, judgments of 22 September 2016, Sun Cali v EUIPO – Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 46, and of 30 June 2021, Wolf Oil v EUIPO – Rolf Lubricants (ROLF), T‑531/20, not published, EU:T:2021:406, paragraph 79 and the case-law cited).
21      As a preliminary point, it must be borne in mind that the contested decision confirmed the decision of the Cancellation Division. The grounds set out in the decision of the Cancellation Division must therefore be taken into consideration for the purpose of examining the present plea.
22      First, it is apparent from paragraphs 7 and 87 of the contested decision that the Board of Appeal confirmed the Cancellation Division’s assessment that the contested international registration enjoyed a presumption of validity on account of its registration as a figurative sign.
23      Secondly, it is apparent from paragraph 7 of the contested decision that the Cancellation Division ruled out the relevance of the decision of the Fifth Board of Appeal of 15 February 2019 (Case R 2604/2017‑5), on the ground that the sign at issue in that case was represented on a sports shoe whereas the contested international registration was not represented on goods and was not necessarily used as a decorative design on the goods at issue. The Cancellation Division added, relying on the case-law of the Court, that a decorative or ornamental design could still have sufficient character in order to overcome the obstacle of registration pursuant to Article 7(1)(b) of Regulation 2017/1001.
24      Furthermore, in paragraph 92 of the contested decision, the Board of Appeal rejected the relevance of the decision of the Fifth Board of Appeal of 15 February 2019 (Case R 2604/2017‑5), noting that the sign at issue in that case was a basic non-distinctive position mark. The Board of Appeal also noted that that sign had subsequently been registered, since the First Board of Appeal had acknowledged that it had acquired distinctive character through use in the decision of 7 October 2022 (Case R 208/2022‑1).
25      Thirdly, the Board of Appeal noted that the contested international registration could not be considered as extremely simple since it consisted of two non-identical chevrons, which were not basic geometric shapes and which were characterised by their specific shape, orientation, proportions and strong contrast. The Board of Appeal concluded that the sign covered by the contested international registration had a ‘somewhat below average’ distinctive character.
Furthermore, after noting, in the contested decision, that the contested international registration enjoyed a presumption of validity and that it had a somewhat below average distinctive character (paragraphs 87 and 93 of the contested decision), the Board of Appeal examined whether that international registration had been used, in its registered form or in forms that did not alter its distinctive character, as an indicator of the commercial origin of the goods at issue. In that context, the Board of Appeal noted that, in the fashion sector, it was usual to place the mark on the exterior of the goods and on the labels sewn on the inside of them. Next, the Board of Appeal noted that the evidence submitted by the intervener showed that the contested international registration had been affixed to the footwear itself in a clearly visible manner. The Board of Appeal concluded that that international registration was used as a trade mark (paragraphs 110 to 114 of the contested decision).
26      In the light of the foregoing, it must be held that, in the contested decision, the Board of Appeal set out to the requisite legal standard the reasons why it, first, rejected the applicant’s argument based on the decision of the Fifth Board of Appeal of 15 February 2019 (Case R 2604/2017‑5) and, secondly, found that the contested international registration had been used as a trade mark and not as a purely decorative element.
27      Thus, contrary to what the applicant claims, the contested decision is sufficiently reasoned.
28      Consequently, the first plea in law must be rejected.
The second plea, alleging infringement of Article 58(1)(a) of Regulation 2017/1001
29      The applicant disputes the Board of Appeal’s assessment that the intervener had demonstrated genuine use of the contested international registration for the goods at issue during the relevant period. The second plea comprises, in essence, three parts. In the first part, the applicant claims, in essence, that the Board of Appeal erred in law by failing to establish use of the contested international registration in respect of each model of shoe at issue.
In the second part, the applicant complains that the Board of Appeal considered evidence relating to variants of the contested international registration that altered its distinctive character.
In the third part, the applicant complains that the Board of Appeal found that the use of the contested international registration on the goods at issue was perceived as an indicator of their commercial origin, even though that use was purely decorative.
The first part of the second plea, alleging lack of proof of genuine use in respect of each of the goods at issue
30      The applicant complains that the Board of Appeal, in essence, erred in law in that it assessed the conditions for genuine use as a whole instead of verifying whether those conditions were satisfied in respect of each model of shoe that was referred to in the evidence submitted by the intervener before the adjudicating bodies of EUIPO.
31      EUIPO and the intervener dispute the applicant’s arguments.
32      Article 58(1)(a) of Regulation 2017/1001 provides that the rights of the proprietor of an EU trade mark are to be declared to be revoked on application to EUIPO if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
33      Article 10(3) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), applicable to revocation proceedings pursuant to Article 19(1) thereof, provides, inter alia, that evidence of use of a trade mark must relate to the place, time, extent and nature of use of the trade mark.
34      As is clear from the case-law, in the context of assessing proof of genuine use of a trade mark, Article 10 of Delegated Regulation 2018/625 does not state that each piece of evidence must necessarily give information about all four elements to which proof of genuine use must relate, namely the place, time, nature and extent of use (judgment of 16 November 2011, Buffalo Milke Automotive Polishing Products v OHIM – Werner & Mertz (BUFFALO MILKE Automotive Polishing Products), T‑308/06, EU:T:2011:675, paragraph 61). The question whether a trade mark has been put to genuine use requires that an overall assessment be carried out, taking into account all the relevant factors. That assessment entails a degree of interdependence between the factors taken into account (see, to that effect, judgments of 8 July 2004, MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 36, and 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 42). Thus each piece of evidence is not to be analysed separately, but rather together, in order to determine the most likely and coherent meaning. In the course of such an analysis, it cannot be excluded that a body of evidence will enable proof of the facts to be established, even though each of those items of evidence, taken in isolation, would not be capable of proving those facts (see judgment of 16 June 2015, Polytetra v OHIM – EI du Pont de Nemours (POLYTETRAFLON), T‑660/11, EU:T:2015:387, paragraph 94 and the case-law cited).
35      In the present case, the Board of Appeal found that use of the contested international registration was established on the basis of the evidence provided by the intervener before the adjudicating bodies of EUIPO, namely numerous product catalogues dated from 2014 to 2019, some of which showed footwear bearing the contested international registration in its registered form or in an altered form, and invoices that, read in relation to those catalogues, showed the sale of dozens of pairs of leisure or sports shoes on which that registration was affixed, issued over a period of four years and addressed to numerous commercial entities established in various Member States (paragraphs 101, 103, 119 to 126 of the contested decision).
36      Furthermore, as the Board of Appeal correctly found in paragraph 129 of the contested decision, ‘sports footwear’ overlaps with the ‘leisure footwear’ and ‘fashion footwear’ covered by the contested international registration. Moreover, the applicant has not called that assessment into question.
37      In accordance with the case-law cited in paragraph 34 above, it must be held that the Board of Appeal did not err in law in assessing the evidence submitted by the intervener as a whole and in examining whether there had been genuine use of the contested international registration in relation to the goods at issue and not in relation to each specific model of sports shoe mentioned in that evidence.
38      Accordingly, the first part of the second plea in law must be rejected.
The second part of the second plea, alleging, in essence, that evidence relating to variants of the contested international registration that altered its distinctive character was taken into account
39      The applicant complains that the Board of Appeal found that the evidence produced by the intervener before the adjudicating bodies of EUIPO was sufficient to establish genuine use of the contested international registration in respect of the goods at issue. In that regard, the applicant claims that that evidence does not establish that goods bearing two chevrons in the registered form were sold in the European Union during the relevant period. Furthermore, according to the applicant, the Board of Appeal erred in law by taking into account evidence relating to use of the contested international registration in forms that alter its distinctive character and that do not therefore meet the requirements laid down in Article 18(1)(a) of Regulation 2017/1001.
40      EUIPO and the intervener dispute the applicant’s arguments.
41      According to Article 18(1)(a) of Regulation 2017/1001, proof of genuine use of a trade mark also includes proof of its use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered.
42      The purpose of Article 18(1)(a) of Regulation 2017/1001, which avoids imposing strict conformity between the form of the trade mark as used and the form in which the mark was registered, is to allow its proprietor, in the commercial exploitation of the sign, to make variations which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in insignificant respects, and the two signs can therefore be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark which was registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (see judgments of 15 December 2015, LTJ Diffusion v OHIM – Arthur et Aston (ARTHUR & ASTON), T‑83/14, EU:T:2015:974, paragraph 18 and the case-law cited; of 8 June 2022, Muschaweck v EUIPO – Conze (UM), T‑293/21, EU:T:2022:345, paragraph 113 (not published) and the case-law cited; and of 16 November 2022, Epsilon Data Management v EUIPO – Epsilon Technologies (EPSILON TECHNOLOGIES), T‑512/21, not published, EU:T:2022:710, paragraph 23 and the case-law cited).
43      The finding of an alteration of the distinctive character of the registered mark requires an assessment of the distinctive and dominant character of the elements added, carried out on the basis of the intrinsic qualities of each of those elements, as well as of the relative position of the different elements within the arrangement of the trade mark (see judgments of 23 September 2020, CEDC International v EUIPO – Underberg (Shape of a blade of grass in a bottle), T‑796/16, EU:T:2020:439, paragraph 139 (not published) and the case-law cited, and of 8 June 2022, UM, T‑293/21, EU:T:2022:345, paragraph 114 (not published) and the case-law cited).
44      For the purposes of that finding, account must be taken of the inherent qualities and, in particular, the greater or lesser degree of distinctive character of the registered mark. The weaker the distinctive character, the easier it will be to alter it by adding a component that is itself distinctive, and the more the mark in question will lose its ability to be perceived as indicative of the origin of the product. The reverse is also true (see, to that effect, judgments of 13 September 2016, hyphen v EUIPO – Skylotec (Representation of a polygon), T‑146/15, EU:T:2016:469, paragraph 29 and the case-law cited, and of 23 September 2020, Shape of a blade of grass in a bottle, T‑796/16, EU:T:2020:439, paragraph 140).
45      Accordingly, the question whether a contested mark has been used in a form differing in elements that alter the distinctive character of that mark in the form in which it was registered calls for a two-stage analysis. It is necessary, first, to rule on the degree of distinctive character of that mark and then, secondly, to determine whether that distinctive character has been altered in the modified form of the mark (see, to that effect, judgments of 10 October 2017, Klement v EUIPO – Bullerjan (Form of an oven), T‑211/14 RENV, not published, EU:T:2017:715, paragraphs 37 and 38, and of 16 November 2022, EPSILON TECHNOLOGIES, T‑512/21, not published, EU:T:2022:710, paragraphs 24, 25 and 37).
–       The degree of distinctiveness of the contested international registration
46      First, in paragraph 87 of the contested decision, the Board of Appeal noted that the contested international registration enjoyed a presumption of validity as a result of its registration and could not therefore be regarded as lacking distinctive character, which, moreover, the applicant has not disputed.
47      That assessment is in line with settled case-law according to which it is necessary to acknowledge a certain degree of distinctiveness of a registered trade mark and from which it follows that a registered trade mark cannot be regarded as generic, descriptive or devoid of any distinctive character, without calling into question its validity in revocation proceedings (see, to that effect, judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 43 and the case-law cited). Thus, in the present case, the contested international registration has at least a minimum degree of distinctiveness that cannot be called into question in the present revocation proceedings.
48      Secondly, the Board of Appeal found that the contested international registration was a purely figurative sign representing a black inclined double chevron against a white background, with the two chevrons pointing towards the right and the white space between them being as large as the chevrons themselves.
The Board of Appeal also noted that the two chevrons, which were not identical, were characterised by their specific shape, orientation, proportions and strong contrast and that they were not basic geometric shapes.
Thus, according to the Board of Appeal, the contested international registration had a ‘somewhat below average’ distinctive character.
49      It must be stated that the applicant does not call into question the abovementioned description of the contested international registration, from which it is apparent that that international registration is characterised, in essence, by the specific shapes and proportions of the two chevrons and the spacing between them, by their orientation, and by the contrast between the colours black and white.
50      Since those findings are free from error, the Board of Appeal correctly found that the degree of distinctiveness of the contested international registration was ‘somewhat below average’.
–       The alleged alteration of the distinctive character of the contested international registration
51      It is apparent from paragraphs 90 and 93 of the contested decision that the elements conferring distinctive character on the contested international registration are the special outline of the chevrons, their number, their equal thickness, their equal width and the equal distance between them. In essence, the Board of Appeal found that, in the evidence of use showing two black chevrons against a white background pointing to the left and two white chevrons against a black background, the distinctive characteristics of the contested international registration were not altered (paragraphs 73, 94 to 100 of the contested decision).
52      The applicant complains, in essence, that the Board of Appeal took into consideration the evidence showing, first, the chevrons pointing to the left, affixed to the side of a shoe and, secondly, chevrons depicted in an inverted colour scheme and/or in a stretched form.
53      EUIPO and the intervener dispute the applicant’s arguments.
(i)    The first complaint, concerning the taking into account of evidence showing chevrons pointing to the left
54      In the contested decision, the Board of Appeal found, in essence, that the evidence submitted by the intervener showing chevrons pointing to the left instead of to the right was relevant. According to the Board of Appeal, the direction of the wearer of the shoes or how they are displayed in shops determined whether the chevrons were pointing to the right or to the left.
55      The applicant challenges that assessment. In its view, a 180-degree rotation of the contested international registration is not a ‘slight variation’. Furthermore, the applicant disputes
the argument that the orientation of the chevrons may depend on the direction of the wearer or the way in which the shoe is displayed in a shop. In that regard, it adds that the fact that shoes are sold in pairs does not mean that, on the right shoe, the contested international registration will be affixed to them facing the right. Furthermore, if the chevrons were used as a trade mark, it would be very unusual for them to be depicted in an inverted form. Thus, in essence, to consider that shoes had been sold with two chevrons pointing to the right is a mere supposition that, in accordance with the case-law of the Court, is not sufficient to demonstrate genuine use of the contested international registration.
56      EUIPO, supported, in essence, by the intervener, disputes the applicant’s arguments.
57      It is apparent from the evidence produced by the intervener before the adjudicating bodies of EUIPO, referred to in the contested decision, that it is the intervener’s practice to affix two chevrons to different parts of the shoes it markets. In particular, many models contain two inclined black chevrons against a white background or two white chevrons against a black background, affixed either to the outer side of each shoe or to the inner and outer sides of each shoe. Furthermore, the EUIPO file contains several photographs showing sports shoes with two inclined chevrons pointing to the right or to the left. Some of those photographs were reproduced in paragraphs 7 and 73 of the contested decision.
58      It must be stated that, in the abovementioned photographs, the chevrons always point towards the toe of the shoe on which they are affixed.
59      Therefore, the Board of Appeal correctly found that, on those models of shoes, the direction of the person wearing them or their presentation in shops will necessarily determine the orientation of the chevrons.
60      Contrary to what the applicant claims, that finding is not a mere supposition, but the consequence of the fact that the chevrons affixed to the side of a shoe point indiscriminately to the left or to the right depending on the orientation of the wearer, or even of the shoe itself, which, moreover, is confirmed by the photographs of the goods at issue reproduced in the contested decision.
61      It follows that the Board of Appeal did not make an error of assessment in taking into consideration the evidence establishing the sale of shoes bearing two chevrons pointing to the left.
62      The first complaint in the second part of the second plea must therefore be rejected.
(ii) The second complaint, concerning the taking into account of evidence showing white chevrons against a black background and/or in a stretched form
63      In the contested decision, the Board of Appeal found that the combination in black and white was not, in itself, a distinctive element of the contested international registration. Thus, the Board of Appeal found, in essence, that, in the evidence showing two white chevrons against a black background and in a stretched form, the distinctive characteristics of the contested international registration were not altered and that those colour variations were decorative in nature. It therefore concluded that the use of the contested international registration in that form did not alter its distinctive character.
64      The applicant complains that the Board of Appeal, in essence, did not include the combination of colours resulting from the representation of black chevrons against a white background among the distinctive elements of the contested international registration and, therefore, made an error of assessment in finding that a change in those colours did not alter its distinctive character.
65      EUIPO, supported by the intervener, disputes the applicant’s arguments.
66      First, it is clear from the case-law that the combination of the colours black and white is banal, with the result that it cannot, on its own, confer on the contested international registration a characteristic likely to be perceived, by the relevant public, as an indication of the origin of the goods concerned (see, to that effect, judgments of 24 November 2005, GfK v OHIM – BUS (Online Bus), T‑135/04, EU:T:2005:419, paragraph 35, and of 5 October 2022, Philip Morris Products v EUIPO (Representation of black and white lines), T‑502/21, not published, EU:T:2022:611, paragraph 22).
67      Therefore, the Board of Appeal did not make an error of assessment in not including the colour combination of the contested international registration among its distinctive elements.
68      Secondly, it must be observed, as the Board of Appeal did, that where evidence shows white chevrons against a black background, the main and distinctive characteristics of the chevrons represented in the contested international registration, namely their outline, the distance separating them, their thickness, their width and the contrast between the colours black and white, are maintained (paragraphs 94 and 96 of the contested decision).
69      The judgment of 19 June 2019, adidas v EUIPO – Shoe Branding Europe (Representation of three parallel stripes) (T‑307/17, EU:T:2019:427), relied on by the applicant, does not call that finding into question.
In that judgment, the Court held that the Board of Appeal had been correct to reject the evidence showing the sign concerned in a reversed colour scheme since that variation was not insignificant in relation to the registered form of that sign, which had very few characteristics, was extremely simple and lacked inherent distinctive character (judgment of 19 June 2019, Representation of three parallel stripes, T‑307/17, EU:T:2019:427, paragraphs 10, 71, 76 and 77).
70      On the contrary, the contested international registration is not extremely simple and has a degree of inherent distinctiveness that is ‘somewhat below average’ (see paragraphs 48 to 50 above). Therefore, a variation in the colour scheme of the contested international registration does not have the same impact as in the case that gave rise to the judgment of 19 June 2019, Representation of three parallel stripes (T‑307/17, EU:T:2019:427).
71      Therefore, contrary to what the applicant claims, the Board of Appeal did not make an error of assessment in finding that the use of the contested international registration in an inverted colour scheme did not alter its distinctive character.
72      Thirdly, as regards the argument based on the taking into account of shoe models showing chevrons in a stretched form, on the one hand, it must be observed, as EUIPO did, that the alleged stretching is almost imperceptible. On the other hand, it is apparent from paragraph 94 of the contested decision that, in those shoe models, the main characteristics of the chevrons represented in the contested international registration, namely their outline, the distance separating them, their thickness and the contrast between the colours black and white, are maintained. Thus, even if the alleged stretching of the chevrons were perceived, it would not alter the specific and distinctive proportions of the chevrons represented in the contested international registration.
73      In view of the foregoing, the Board of Appeal did not make an error of assessment in taking into account the evidence concerning the use of two white chevrons against a black background and/or in a stretched form, horizontally affixed to the side of sports shoes, since that use does not alter the distinctive character of the contested international registration. Since the second complaint in the second part of the second plea is unfounded, it must be rejected.
74      Accordingly, the second part of the second plea in law must be rejected.
The third part of the second plea, alleging lack of evidence of use of the contested international registration as a trade mark
75      In paragraph 110 of the contested decision, the Board of Appeal found that the evidence in the file showed that the contested international registration had been consistently affixed to the intervener’s footwear and in a clearly visible manner and, therefore, that it had been used as a trade mark, given that it was usual, in the fashion sector, to place the mark on the exterior of the goods and on the labels sewn on the inside of them.
76      The applicant complains that the Board of Appeal found that the contested international registration, when used for the goods at issue, constituted use as a trade mark.
77      EUIPO, supported, in essence, by the intervener, disputes the applicant’s arguments.
78      It is clear from the case-law that there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods and services for which it is registered, in order to create or preserve an outlet for those goods and services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (see judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 39 and the case-law cited; see also, to that effect, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 36).
79      It is apparent from the evidence submitted before the Cancellation Division that the contested international registration is affixed, in its registered form or in acceptable variants, to the footwear itself and in a clearly visible manner.
80      According to the applicant, affixing the contested international registration to the footwear itself does not constitute use as a trade mark, but purely decorative use.
81      First, in that regard, the applicant submits that the use of the contested international registration in a manner very similar to that of a position mark in respect of which registration was rejected by decision of the Fifth Board of Appeal of 15 February 2019 (Case R 2604/2017‑5) cannot be regarded as use as a trade mark.
82      It is apparent from Article 3(3)(d) of Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for implementing certain provisions of Regulation 2017/1001, and repealing Implementing Regulation (EU) 2017/1431 (OJ 2018 L 104, p. 37), that a position mark is characterised by the specific way in which it is placed or affixed on the goods and that it is to be represented by submitting a reproduction which appropriately identifies the position of the mark and its size or proportion with respect to the relevant goods.
83      In the present case, the contested international registration was registered as a figurative mark and not as a position mark, which the applicant, moreover, acknowledged at the hearing.
84      Furthermore, the representation of the contested international registration does not include the goods on which it is supposed to be affixed or, a fortiori, a precise identification of the position of the contested international registration and its size or proportion in relation to the goods at issue. Thus, the contested international registration does not have the characteristics of a position mark.
85      Consequently, the assessments made in the decision of the Fifth Board of Appeal of 15 February 2019 (Case R 2604/2017‑5) cannot be applied to the present case.
86      Therefore, the applicant’s argument based, in essence, on an analogy between the contested international registration and the position mark at issue in the decision of the Fifth Board of Appeal of 15 February 2019 (Case R 2604/2017‑5) must be rejected.
87      Secondly, the applicant relies on the judgment of 4 May 2022, Deichmann v EUIPO – Munich (Representation of two crossed stripes on the side of a shoe) (T‑117/21, not published, EU:T:2022:271), which confirmed that simple graphic elements on shoes are not perceived as trade marks and the approach of which is, in essence, applicable to the present case.
88      In paragraph 61 of the judgment of 4 May 2022,
Representation of two crossed stripes on the side of a shoe (T‑117/21, not published, EU:T:2022:271), the Court held that to accept that every geometric shape, even the most simple, has distinctive character because it features on the side of a sports shoe would make it possible for some manufacturers to appropriate simple, and above all decorative, shapes, which must remain accessible to everyone.
89      However, in the present case, the sign covered by the contested international registration is not a basic geometric figure and was not classified as a simple and banal shape by the Board of Appeal (see paragraphs 48 and 50 above).
90      Therefore, contrary to what the applicant claims, the approach adopted in the judgment of 4 May 2022, Representation of two crossed stripes on the side of a shoe (T‑117/21, not published, EU:T:2022:271), cannot be applied to the present case.
91      Thirdly, the applicant claims that, instead of educating the public to perceive the contested international registration as a mark by affixing it to labels, the intervener deliberately chose to use it as a non-distinctive surface pattern by affixing it directly to the goods at issue. It adds that, in accordance with the case-law of the Court of Justice, signs that are indissociable from the appearance of the goods are generally unlikely to be perceived as an indication of origin.
92      It must be held that, in so far as that argument seeks to call into question the presumption of validity enjoyed by the contested international registration, it should be rejected for the reason set out in paragraphs 46 and 47 above.
93      Furthermore, it is clear from the case-law that there is an inherent probability that a sign consisting of a repetitive sequence of elements will be used as a surface pattern and thus will be indissociable from the appearance of the goods concerned (judgment of 13 September 2018, Birkenstock Sales v EUIPO, C‑26/17 P, EU:C:2018:714, paragraph 41).
94      In that case, according to the case-law, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001 (judgment of 13 September 2018, Birkenstock Sales v EUIPO, C‑26/17 P, EU:C:2018:714, paragraph 33).
95      On the one hand, it must be stated that, in the present case, the contested international registration is composed of two chevrons and not a repetitive sequence of elements. On the other hand, even assuming that there is a likelihood that the contested international registration will be used as a surface pattern, such use is not apparent from the evidence in EUIPO’s file. Moreover, the applicant merely relies on such use wit
hout providing further details.
96      Therefore, the applicant is wrong to claim that the contested international registration was used as a surface pattern.
97      Fourthly, the applicant’s argument that the considerations in the judgment of 29 July 2019, Red Bull v EUIPO (C‑124/18 P, EU:C:2019:641), which led the Court of Justice to confirm the invalidity of the marks at issue in that case, are applicable to the present case, seeks, in essence, to deny that the contested international registration has any distinctive character and must, consequently, be rejected on the grounds set out in paragraphs 46 and 47 above.
98      Fifthly, it must be borne in mind that the Board of Appeal found that there had been genuine use of the contested international registration on the basis, inter alia, of the intervener’s numerous product catalogues, read in conjunction with the invoices addressed to its customers (see paragraph 35 above).
99      As the Board of Appeal correctly found in paragraph 122 of the contested decision, although there is no proof of distribution of those catalogues, the evidence must be seen as a whole.
100    In that regard, it is apparent from paragraphs 120 and 123 of the contested decision that the catalogues produced by the intervener show footwear bearing the contested international registration and to which correspond a unique model code and colour code that are also found in the invoices issued to customers of the intervener established in various Member States.
101    Therefore, it must be held, as the Board of Appeal found (paragraphs 121 and 122 of the contested decision), that, assessed in conjunction with the invoices produced by the intervener, the intervener’s product catalogues establish that the use of the contested international registration was outward with the aim of acquiring a commercial position on the relevant market for the goods at issue.
102    In the light of all of the foregoing, the applicant has failed to establish that there was any error vitiating the Board of Appeal’s assessment that the contested international registration was used as a trade mark in respect of the goods at issue.
103    Since the third part of the second plea is unfounded, it must be rejected and, accordingly, the second plea in law must be rejected.
104    Since none of the pleas in law has been upheld, the action must be dismissed in its entirety.
Costs
105    Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
106    Since the applicant has been unsuccessful and having regard to the hearing on 9 January 2025, it must be ordered to bear its own costs and to pay those incurred by EUIPO, in accordance with the form of order sought by EUIPO.
107    Since the intervener has not applied for the applicant to be ordered to pay the costs relating to the proceedings before the Court, it must be ordered to bear its own costs.
108    Lastly, as regards the intervener’s request that the applicant be ordered to pay the costs incurred before the Board of Appeal, suffice it to note that the present judgment dismisses the action brought against the contested decision and that, therefore, it is the operative part of that decision that continues to determine the costs in question (see, to that effect, judgment of 28 April 2021, Comercializadora Eloro v EUIPO – Zumex Group (JUMEX), T‑310/20, not published, EU:T:2021:227, paragraph 45).
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Barry’s Bootcamp Holdings LLC to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO);
3.      Orders Hummel Holding A/S to bear its own costs.
Marcoulli
Schwarcz
Spangsberg Grønfeldt
Delivered in open court in Luxembourg on 24 September 2025.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.