Classification of position mark as a figurative mark irrelevant in determining the subject matter of a trade mark

C-223/18 P

Deichmann v EUIPO

Trade marks: Genuine use

06 Jun 2019

The matter at hand

This case concerns an EU figurative mark, owned by the Spanish company Munich, consisting of the graphical representation of a shoe with two intersecting stripes for ‘sports footwear’ in class 25. In the application for registration of the trade mark, the outline of the shoe was represented in a dotted line to indicate that protection was claimed only for the intersecting stripes and their position on a shoe and did not relate to the shape of the shoe. The application, however, did not contain any description of the elements for which protection was claimed.

In infringement proceedings brought before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany) against the German company Deichmann, the latter instituted a counterclaim for the revocation of the trade mark on the basis of Article 51(1)(a) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, claiming that the trade mark had not been put to genuine use during the five-year period preceding the date of the counterclaim. The Landgericht Düsseldorf subsequently stayed the infringement proceedings under Article 100(7) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, allowing Deichmann to submit an application for revocation to EUIPO.

The Cancellation Division of EUIPO upheld the application for revocation, but that decision was annulled by the Fourth Board of Appeal. Before the General Court, Deichmann took the position that the trade mark had not been used in the form in which it was registered, arguing that the subject matter of the trade mark did not consist only of the intersecting stripes and their position on a shoe, but also related to the shape of the shoe shown in the registration. In support, Deichmann stated that the trade mark had been registered as a figurative mark and did not contain any description clarifying that it concerns a ‘position mark’. The General Court, however, dismissed the appeal, taking the view that the classification of the trade mark as a figurative mark or a position mark was irrelevant and that it may be inferred directly from the graphical representation of the trade mark that the outline of the shoe is shown only to specify the position of the intersecting stripes on a shoe. Deichmann appealed that decision before the ECJ.

The judgment of the ECJ

The ECJ agrees with the General Court that “the classification of a ‘position mark’ as a figurative or three-dimensional mark or as a specific category of marks, is irrelevant”, considering that on the relevant date in this case the applicable law did not define ‘position marks’, and that “position marks are similar to the categories of figurative and three-dimensional marks as they relate to the application of three-dimensional elements to the surface of a product” (paragraph 42).

As to the determination of the subject matter of the trade mark registration, the ECJ refers to Sieckmann (C-273/00), according to which “the graphic representation of a mark must be clear, precise, self-contained, easily accessible, intelligible, durable and objective” (paragraph 44). The ECJ holds that it follows from the General Court’s factual assessment that it took the view that the trade mark complied with these conditions, by considering that “it could be inferred directly from the graphic representation of the mark at issue, and with sufficient precision, that the protection sought covered only the two black intersecting lines represented in solid lines” (paragraph 46). Considering, further, that the graphic representation was already sufficiently clear to determine the subject matter of the trade mark, the fact that the registration does not contain an additional description or disclaimer is irrelevant. “While it is true that, as the appellant states, often a description or a disclaimer for the purposes of delimiting the scope of the protection sought is added to the use of the broken lines in the registration of a trade mark, the fact remains that neither the legislation applicable ratione temporis nor the case-law requires the filing of such declarations. In so far as the appellant submits, in addition, that the EUIPO Guidelines require that a position mark is expressly described as such, it is to be noted that they are not binding legal acts for the purpose of interpreting provisions of EU law” (paragraph 49).

Commentary

In its judgment, the ECJ considers that on the relevant date in this case, the applicable law did not define ‘position marks’. The outcome would, however, most likely have been the same under Commission Implementing RegulationCommission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation [EC] No 40/94 on the Community trade mark as amended by Commission Regulation [EC] No 1041/2005 of 29 June 2005. 2017/1431, applicable from 1 October 2017, which provides that in the case of ‘a trade mark consisting of the specific way in which the mark is placed or affixed on the product (position mark), the mark shall 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. The elements which do not form part of the subject-matter of the registration shall be visually disclaimed preferably by broken or dotted lines. The representation may be accompanied by a description detailing how the sign is affixed on the goods’.

Note that in Hartwell (C-578/17, also summarised in this book), the ECJ held that the classification by the applicant of a mark as a colour mark or a figurative mark was relevant in determining the subject matter of the trade mark. The decisive difference was that in that case the classification of that mark as a colour mark was inconsistent with the graphic representation thereof, with the result that the subject matter of the trade mark could not be determined clearly and precisely.