Case T‑718/16

Mad Dogg Athletics, Inc.

v

European Union Intellectual Property Office

(EU trade mark — Revocation proceedings — EU word mark SPINNING — Partial revocation — Article 51(1)(b) of Regulation (EC) No 207/2009 (now Article 58(1)(b) of Regulation (EU) 2017/1001))

Summary — Judgment of the General Court (Ninth Chamber), 8 November 2018

EU trade mark — Surrender, revocation and invalidity — Grounds for revocation — Mark which has become, in consequence of acts or inactivity of its proprietor, a common name in the trade — Assessment in the light of the perception of the sign by the relevant class of persons

EU trade mark — Appeals procedure — Appeal brought against a decision of the Cancellation Division of EUIPO — Examination by the Board of Appeal — Scope — Facts and evidence not submitted in support of the opposition within the period prescribed for that purpose — Account taken — Discretion of the Board of Appeal — New or supplementary evidence

EU trade mark — Surrender, revocation and invalidity — Grounds for revocation — Mark which has become, in consequence of acts or inactivity of its proprietor, a common name in the trade — Effect of revocation

In the event of the revocation of an EU trade mark, that revocation is effective as from the date of the application for revocation or, at the request of one of the parties, an earlier date on which one of the grounds for that revocation occurred. By contrast, the EU legislature has not made provision for revocation to take effect from a date following the date of the application for revocation. It is thus apparent from the wording of Article 55(1) of Regulation No 207/2009 on the European Union trade mark that the revocation decision must be based on one of the grounds referred to in Article 51 of that regulation which applied at the latest on the date of filing of the application for revocation. Consequently, contrary to the applicant’s assertions, it follows from that provision that the applicability of the ground for revocation must be examined in the light of the factual and legal context on that date at the latest. It has already been held, concerning Article 12(1) of First Directive 89/104 on trade marks and Article 51(1)(a) of Regulation No 207/2009, which are identically worded, that, regarding the revocation of a trade mark on the ground of a lack of genuine use, only circumstances which arise before the filing of the application for revocation may be taken into account, without prejudice to the possibility of taking into consideration circumstances arising after that filing which may make it possible to confirm or better assess the extent to which the trade mark was used during the relevant period and the real intentions of the proprietor during that time. As the context of that case-law was the revocation of the rights of the proprietor of a trade mark on the ground of a lack of genuine use, it can be transposed, mutatis mutandis, to the context of examining an application for revocation of a trade mark on the ground that it has become the common name for a product or a service in the trade. This approach is required because the rule set out in Article 55(1) of Regulation No 207/2009 applies without distinguishing between the grounds for revocation referred to in Article 51(1) thereof. (see paras 15-19)

Under Article 76(2) of Regulation No 207/2009 on the European Union trade mark, consideration of evidence which was not submitted within the period prescribed by the European Union Intellectual Property Office (EUIPO) but was submitted at a later stage of the proceedings cannot be accepted, except by way of complement to the evidence submitted within that period. While that provision thus allows for evidence which is submitted late but is complementary to be taken into account, it does not, by contrast, authorise the Board of Appeal to extend its discretion to new evidence. The application of that case-law, which permits evidence submitted late to be accepted, subject to conditions, nevertheless cannot entail disregard for the letter and effectiveness of Article 55(1) of Regulation No 207/2009. Evidence submitted late, in particular if it relates to facts arising after the date of filing of the application for revocation, thus cannot be taken into account unless it confirms or makes it possible to better assess circumstances arising before, or prevailing on, the date of the application for revocation. (see paras 26, 27)

Protection of a trade mark at EU level means that, in return, its proprietor must exercise sufficient vigilance in defending and asserting its rights throughout the European Union. Accordingly, the proprietor of a trade mark must have its rights revoked if, owing to the proprietor’s inactivity, the trade mark in question is transformed into a common name even in a limited part of the territory of the European Union or, as the case may be, in a single Member State. Revocation thus permits other operators freely to use the registered sign. It thus pursues an aim which is in the public interest, namely that signs or indications which have become a common name for goods or services in respect of which a trade mark has been registered may be available to or freely used by all. Thus, Article 51(1)(b) of Regulation No 207/2009 on the European Union trade mark seeks to guarantee the distinctive character of a trade mark as an indication of origin and to avoid generic terms being reserved indefinitely for a single undertaking by reason of their having been registered as trade marks. (see paras 38, 39)

It is apparent from case-law that the question whether a trade mark has become the common name in the trade for a product or service in respect of which it is registered must be assessed not only in the light of the perception of consumers or end users but also, depending on the characteristics of the market concerned, in the light of the perception of professionals, such as sellers. However, in general, the perception of consumers or end users will play a decisive role. Thus, in a situation characterised by the loss of distinctive character of the trade mark concerned from the point of view of end users, that loss may result in the revocation of the rights conferred on the proprietor of the mark in question. The fact that sellers are aware of the existence of that trade mark and of the origin which it indicates cannot, on its own, preclude such revocation. It follows from that case-law that the relevant public, whose views must be taken into account in determining whether the contested mark has become the common name in the trade for a product or service in respect of which it is registered, must be defined in the light of the characteristics of the market for that product or service. (see paras 53, 54)