General Court decides battle of the shoes
The EU General Court yesterday dismissed an appeal brought by footwear chain Deichmann over a rival’s trademark.
The disputed figurative mark, which was applied for in 2002 by Munich SL, is of a sports shoe featuring two lines that cross over to form an X.
Registered in March 2004, the mark covers class 25 (sports footwear).
Munich SL then brought infringement proceedings against competitor Deichmann at the Regional Court of Düsseldorf, Germany.
Deichmann responded with a counterclaim of invalidity in June 2010 and proceedings were stayed for Deichmann to apply to the European Union Intellectual Property Office (EUIPO) for revocation.
In 2011, Deichmann applied for revocation of the mark, arguing that it had not been put to genuine use in the EU over the five-year period before the counterclaim was filed.
Deichmann also applied to the EUIPO for invalidity on absolute grounds (this can include where the mark has been registered contrary to article 7 of regulation 207/2009, which concerns the character of the mark, or in bad faith).
The EUIPO’s Cancellation Division upheld the application for revocation, finding that the evidence produced by Munich SL had not proved genuine use.
However, on appeal, the EUIPO’s Fourth Board of Appeal annulled the Cancellation Division’s decision and rejected the application for revocation.
The appeal board found that the evidence showed use of the mark for the relevant period, which it defined as five years preceding the date of the counterclaim filing.
On the character of the applied-for mark, the Board of Appeal said that the decisive factor for the scope of protection is not the categorisation of the sign as a figurative, 3D or position sign, but the way in which the mark will be perceived by the relevant public in relation to the goods concerned.
Deichmann appealed to the General Court, arguing that it should annul the contested decision and order the EUIPO and Munich SL to pay costs.
Deichmann claimed the appeal board had wrongly assessed the subject matter of the mark by holding that the categorisation of the mark was irrelevant.
The General Court, in disagreeing with Deichmann, said: “Contrary to the applicant’s submission, it cannot be inferred from the mere fact that the ‘figurative mark’ box was ticked when the mark at issue was registered that it may not be regarded, at the same time, as a ‘position’ mark.”
Deichmann also claimed that the Board of Appeal should have examined whether the mark at issue, consisting of the overall image of a sports shoe with intersecting stripes, was used on shoes, when determining whether the mark was used in its registered form.
“It should be added that it has already been found that the mark at issue has been used many times in an identical or very similar form to that registered, which shows actual use of that mark even if its distinctive character is rather weak,” explained the General Court.
The court also rejected Deichmann’s contention that the evidence didn’t point to genuine use.
Deichmann was ordered to pay costs and the action was dismissed.
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