CJEU rejects Deichmann appeal over ‘position’ TM

German shoemaker  Deichmann has lost an appeal before the Court of Justice of the European Union (CJEU) after it tried to have a Spanish competitor’s trademark revoked.

In a  judgment on Thursday, June 6, the CJEU upheld a decision by the General Court that a trademark owned by  Munich was valid.

The trademark in dispute was registered in March 2004 for a figurative mark of a shoe with two criss-crossed lines on its side.

In June 2010, Munich brought trademark infringement proceedings against Deichmann in Germany, which counterclaimed and applied to have the mark revoked in January 2011.

The revocation was initially granted by the Cancellation Division of the European Union Intellectual Property Office, but this was later overturned by the General Court in 2016, as reported by  WIPR.

In its judgment, the CJEU rejected Deichmann’s argument that the General Court had incorrectly assumed that “whether the mark was a position mark or a figurative mark was irrelevant”.

Deichmann claimed that as a result, the General Court’s assessment of genuine use of the mark was invalid.

Under EU law, a position mark consists of the specific way in which the mark is placed or affixed to the product.

Deichmann had argued that in order to determine whether a trademark has been put to genuine use, it is important to know whether it has been registered as a position mark or a figurative mark.

It said that it was “incorrect to regard the mark at issue as a position mark, since it was registered as a figurative mark”.

But the CJEU said that “on the relevant date in this case”, European law did not define “position marks”, so the General Court “was not required to find that the classification of the mark as a figurative or a position mark was relevant”.

Additionally, it said the General Court was fair in its assessment of the mark and did not err in its finding that although the mark was registered as a figurative mark, it also came within the scope of position mark.

“Contrary to the Deichmann’s reasoning, the fact that the mark at issue has been registered as a figurative mark is not relevant here for the purpose of determining the scope of the application for protection,” the CJEU said.

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