The matter at hand
In 2004, the German company Bullerjan 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, Klement filed an application for revocation of that mark due to non-use. Both the Cancellation Division and the Second Board of Appeal dismissed the application, after which Klement appealed to the General Court, arguing that the contested mark had merely been used in combination with the word element ‘Bullerjan’ affixed to the front of the ovens. Since, according to Klement, this element possessed a high degree of distinctive character whereas the contested mark did not, the addition of the word element would necessarily alter 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, leading Klement to bring the case before the ECJ. In its first ruling of 1 December 2016 (C-642/15 P), the ECJ agreed that the judgment of the General Court was not clear and comprehensible. In particular, the General Court had failed to explain why the relevant trade circles would perceive the shape of the contested mark as a strong indication of origin, while they would also perceive the shape of similar ovens marketed by other manufacturers as functional. The appeal was granted and the case was referred back to the General Court.
In 2017, the General Court again concluded that genuine use had been proven, considering, this time, that the contested mark possessed a high degree of distinctive character because the shape of the oven departed significantly from the customs in the relevant sector and that, although the word element could make it easier to determine the commercial origin of the ovens, it was not so prominently visible that it altered the distinctive character of the contested mark as a whole. Klement subsequently brought the case before the ECJ again.
The Judgment of the ECJ
The ECJ first of all rules that it is sufficiently clear from the judgment under appeal that the General Court, although it found the shape to be somewhat functional, found that the mark did not consist exclusively of a shape necessary to obtain a technical result within the meaning of Article 7(1)(e) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, and based its conclusion that the mark in question had a strong distinctive character on its unusual shape.
Regarding the presence of the word mark ‘Bullerjan’ on the front of the ovens, the ECJ rules that the General Court sufficiently explained why it found that the word mark ‘Bullerjan’ is significantly less distinctive compared to the shape of the oven, by considering that the word mark only covers a limited part of the oven and is visible only when the oven is viewed from the front.
The fact that the word mark 'Bullerjan' can make it easier to determine the commercial origin of the goods in question, does not, according to the ECJ, conflict with the conclusion that it does not alter the distinctive character of the three-dimensional shape of those goods. The addition of a word mark to a three-dimensional mark does not necessarily affect the distinctive character of the three-dimensional mark.