Source: EURLEX
Language: en
Format: md

Case T‑146/15

hyphen GmbH

v

European Union Intellectual Property Office

‛EU trade mark — Revocation proceedings — EU figurative trade mark representing a polygon — Genuine use of the trade mark — Article 15(1), second paragraph (a) and Article 51(1)(a) of Regulation (EC) No 207/2009 — Shape differing by elements not altering the distinctive character’

Summary — Judgment of the General Court (Second Chamber), 13 September 2016

1. EU trade mark — Surrender, revocation and invalidity — Causes of revocation — No genuine use of a trade mark — Use of the mark in a form differing by elements not altering the distinctive character of the mark — Subject-matter and scope of Article 15(1), second paragraph, (a), of Regulation No 207/2009

   (Council Regulation No 207/2009, Arts 15(1), second paragraph, (a), and 51(1)(a))
2. EU trade mark — Surrender, revocation and invalidity — Causes of revocation — No genuine use of a trade mark — Use of the mark in a form differing by elements not altering the distinctive character of the mark — Figurative trade mark representing a polygon

   (Council Regulation No 207/2009, Arts 15(1), second paragraph, (a), and 51(1)(a))
3. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Coexistence of earlier marks — Recognition of a certain degree of distinctiveness of a national mark

   (Council Regulation No 207/2009, Art. 8(1)(b))
4. EU trade mark — Surrender, revocation and invalidity — Causes of revocation — No genuine use of a trade mark — Use of the mark in a form differing by elements not altering the distinctive character of the mark — Simultaneous use of several signs — Joint use of a figurative element and a word element on the same textile or clothing item

   (Council Regulation No 207/2009, Arts 15(1), second paragraph, (a), and 51(1)(a))

1. Article 15(1), second paragraph, (a) of Regulation No 40/94 on the EU trade mark relates to a situation where a national or EU registered trade mark is used in trade in a form slightly different from the form in which registration was effected. The purpose of that provision, which avoids imposing strict conformity between the used form of the trade mark and the form in which the mark was registered, is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, 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 negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade.

   In order to establish a change in the distinctive character of the registered trade mark it is necessary to perform an examination of the distinctive and dominant character of the elements which have been added, based on the intrinsic qualities of each of these elements as well as the relative position of the various elements in the configuration of the trade mark.

   For the purposes of that finding, account must be taken of the intrinsic qualities and, in particular, the greater or lesser degree of distinctive character of the earlier mark used solely as part of a complex trade mark or jointly with another 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 will lose its ability to be perceived as an indication of the origin of the product. The reverse is also true.

   Moreover, where a mark is constituted or composed of a number of elements and one or more of them is not distinctive, the alteration of those elements or their omission is not such as to alter the distinctive character of that trade mark as a whole.

   In order for the second subparagraph of Article 15(1)(a) of Regulation No 207/2009 to apply, the additions to the registered mark must not alter the distinctive character of the mark in the form in which it was registered, in particular because of their ancillary position in the sign and their weak distinctive character.

   (see paras 27-31)
2. See the text of the decision.

   (see paras 42-55)
3. In order to avoid infringing Article 8(1)(b) of Regulation No 207/2009, it is necessary to acknowledge a certain degree of distinctiveness of an earlier registered mark. It follows that the earlier trade mark cannot be found to be generic, descriptive or devoid of any distinctive character, without calling into question its validity in revocation proceedings, which would give rise to an infringement of Article 8(1)(b) of Regulation No 207/2009.

   Thus, even if the registered mark had to be considered devoid of a high degree of distinctive character, a minimum of distinctive character should nevertheless be acknowledged for it, by virtue of its having been registered.

   (see paras 43, 44)
4. Where several signs are used simultaneously, steps must be taken to ensure that, for the purposes of the application of the second subparagraph of Article 15(1)(a) of Regulation No 207/2009, such use does not alter the distinctive character of the registered sign, having regard inter alia to business practices in the relevant sector. The joint use of a figurative element and a word element on the same textile or clothing item does not undermine the identification function of the registered mark; it is not unusual in the clothing sector to juxtapose a figurative element with word element linked to the designer or manufacturer, without the figurative element losing its autonomous identification function in the overall impression.

   (see paras 57, 58)

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