3D kangaroo TM appeal bounces at EU court
The EU General Court today dismissed an appeal centring on a 3D kangaroo trademark.
Australia-based MJ Quinlan & Associates applied to register the mark with the European Union Intellectual Property Office (EUIPO) in 1996. The mark, which depicts a kangaroo from various angles, was registered in class 29 to cover snacks and potato chips.
In 2014, German snack brand Intersnack Group asked the EUIPO to revoke the mark, registered in 1999.
Intersnack claimed that there had been no genuine use of the mark for a continuous period of five years, between September 2009 and September 2014.
The Cancellation Division partially granted the request in 2015. It revoked the mark in the context of snacks and salted foods, but not in relation to potato chips and potato-based snacks.
Intersnack appealed against the decision.
In 2017, the EUIPO’s Second Board of Appeal annulled the Cancellation Division’s determination that the kangaroo mark should be upheld in relation to potato chips and potato-based snacks.
The board said that MJ and Intersnack had entered into a licensing agreement covering the marketing and sale of products related to the mark, but that MJ had failed to establish that Intersnack’s use of it was part of the agreement.
Regardless, MJ’s claim that Intersnack had permission to use the mark had no bearing on the alleged lack of genuine use, the board explained.
The board added that evidence of product sales failed to show the obvious and unequivocal use of the kangaroo mark in relation to those products.
MJ appealed against the decision.
The Australian company claimed that the mark had been used in varying forms on product packaging, alongside other elements.
For example, the word element jumpy’s has appeared on packaging alongside a stylised silhouette of a kangaroo, next to a 3D depiction of the animal, MJ said.
The General Court today found that although some of MJ’s packaging featured a 3D kangaroo shape, this alone is insufficient to prove that genuine use of the shape as a trademark occurred during the relevant period.
In the context of 3D trademarks, consumers must be able to “unequivocally” associate the 3D element of the mark with the goods covered by it, the court explained.
However, the 3D kangaroo mark could not be seen on some of MJ’s product packaging, and a 2D depiction of a kangaroo was instead displayed in such instances.
The General Court said that the EUIPO had “made no error in finding that there was no genuine use of the contested mark”, as MJ had failed to show that the 3D mark was recognised as an indication of commercial origin during the relevant time period.
The court dismissed the appeal and ordered MJ to pay the costs of Intersnack and the EUIPO.
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