The matter at hand

In 2004, Bullerjan GmbH successfully applied for the registration of the shape of an oven as a three-dimensional EU trade mark for ‘ovens’ in class 11.

In 2011, Mr. Klement filed an application for revocation of that mark due to non-use pursuant to Article 51(1) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark. Both the Cancellation Division and the Board of Appeal of EUIPO dismissed the application. Mr. Klement appealed the decision of the Board of Appeal to the General Court, arguing that the mark in question was used only in combination with the distinctive word element “Bullerjan” applied to the front of the ovens and that this necessarily altered the distinctive character of the mark in the form in which it was registered within the meaning of Article 15(1)(a) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark. The General Court dismissed the appeal, considering that the word "Bullerjan" applied to the front of the goods did not affect the distinctive character of the shape mark in the form in which it was registered.

Mr. Klement appealed the General Court’s decision to the ECJ, submitting that the reasons given in the contested judgment are contradictory, considering that the General Court held, on the one hand, that the mark applied for has an unusual form, while on the other hand confirming that other manufacturers sell ovens with a very similar shape. Furthermore, the General Court held, on the one hand, that the shape in question has a high degree of distinctiveness despite its functionality, while on the other hand considering that the similarity between the mark in question and the ovens sold by other manufacturers is caused by the fact that said manufacturers wanted to obtain a certain technical result.

The judgment of the ECJ

The ECJ rules that even assuming, as EUIPO maintained, that the mere fact that other manufacturers market ovens with a very similar shape does not preclude the shape of that mark from being considered unusual, “the contested judgment does not explain why the relevant trade circles perceive the shape of the contested mark as a strong indication of origin while they perceive the shape of similar ovens marketed by other manufacturers as functional” (paragraph 27).*

Furthermore, the ECJ rules that it is not clear why the fact that other manufacturers market ovens with a shape very similar to that of the three-dimensional mark in question did not affect the General Court’s assessment of the distinctive character of the mark in question (paragraph 28).

With reference to its judgment in Lotte v EUIPO (C-586/15), the ECJ notes that “[i]n the context of the application of the first subparagraph of Article 15(1)(2)(a) of [Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark], according to which the use of an EU mark in a form that differs from the form in which it is registered without altering the distinctive character thereof constitutes genuine use, the form in which the mark is registered must (…) be assessed in light of the distinctive character of the mark in question, in order to establish whether that distinctive character is affected. In this regard, the high or low degree of distinctive capacity of the contested mark must be taken into account ” (paragraph 29).*

On this basis, the ECJ concludes that the reasons given by the General Court in its judgment are not clear and comprehensible and that the contested judgment must therefore be set aside.

* Unofficial translation; The judgment is available in French and German only.