The EU general Court has found that a registration consisting of the outline of a teddy bear shape has been put to genuine use in the EU – a decision which can be contrasted with the recent UK ruling revoking Lindt's registration for the word TEDDY for non-use. In a parallel decision, the Court also considered the distinctiveness of a similar mark (more here).

What has happened?

• The case concerns an EUTM registration for the shape of the teddy bear depicted below, covering jewellery, leather goods and clothing, owned by S. Tous S.L. (TOUS). 

• Polish jewellery company Apart sp. z o.o. (APART) applied to revoke the registration for non-use. The action failed at every stage, including before the General Court. TOUS's mark remains registered. 

• The mark was held to have been put to genuine use in the EU even though it had been used in variant forms. It is established law that the use of variant forms of a mark can constitute genuine use provided that the variants do not alter the distinctive character of the mark as registered. Here, variations in the shape, outline and sharpness of the mark did not alter the distinctive character of the mark as registered. 

• While small changes to simple (low distinctive) marks can have a significant impact on distinctiveness, this was not the case here. The mark in question was not simple, according to the Court. 

• The Court dismissed arguments that the mark had not been used as a trade mark (an indication of origin), but as a decorative element. This aspect of the decision can be contrasted with the recent ruling of the UK Appointed Person who revoked Lindt's registration for the word TEDDY for non-use since use had been merely descriptive and not as an indicator of origin. 

• The decision shows how each case turns on its own facts. The teddy bear logo here had been widely used in various forms including as a tag on bags and as a logo alongside the name TOUS. This was more obviously trade mark use. In contrast, the word TEDDY had appeared below the word Lindt on various confectionary items in a way that could be interpreted as simply describing the shape of the confectionary item. 

Want to know more?

This registration covers leather goods and clothing, as well as jewellery. TOUS provided evidence of use of the mark in various forms, including:

Key aspects of the ruling are as follows:

• APART argued that these were not uses of the mark for which registration had been granted and there were significant variations in shape, colour, outline and sharpness. 

• The General Court noted that the contested mark does not have a colour claim and, as a result, the variations in that regard do not support the conclusion that the distinctive character has been altered. As regards the outline, although it appears in multiple variants, it remains sufficiently clear and distinctive to have no impact on consumer perception, to allow the contested sign to be recognised and thus to be associated with the trade mark. As regards the sharpness of the outline, the Court emphasises that that aspect cannot affect the perception of the sign, which remains visible irrespective of its sharpness. 

• Furthermore, the addition of decorative precious stones, when the sign takes the form of certain goods, does not alter the distinctive character of the contested mark because the characteristic outline can still be seen. The differences between the sign as registered and the sign as used on the goods concerned are not such as to lead the relevant public to fail to recognise the contested mark or to alter its distinctive character.

• APART tried to argue that the contested sign as registered is extremely simple and that the smallest changes to it are significant in the eyes of consumers, who pay attention to the details. Case law says that changes to marks which are of low distinctiveness are more likely to alter that distinctiveness in the eyes of the average consumer. The General Court agreed with the Board of Appeal that the contested sign is not as simple as APART claimed, and that none of the changes in question in any way prevent the relevant public from perceiving the contested mark clearly.

• APART tried to rely on the restriction of protection outlined in the Common Communication on the Common Practice of the Scope of Protection of Black and White (“B&W”) Marks of 15 April 2014, namely that use in colour is not identical to use in black and white.  However the General Court repeated the EUIPO Cancellation Division point which is that what is relevant in non-use cancellation proceedings is not decisive whether the sign as used is identical to the sign as registered, but whether the changes to the contested sign alter its distinctive character.

• APART also called in to question TOURS' evidence. APART claimed that additional evidence submitted by TOURS before the Board of Appeal should not have been taken into consideration because it was submitted out of time. The General Court agreed with the Board of Appeal, namely that the additional evidence merely strengthened and clarified the evidence submitted at first instance. 

• APART also complained that the Board of Appeal had given too much weight to evidence from unreliable third-party statements, such as the certificate issued by the Asociación para la Defensa de la Marca (Andema). It stated that that could not be regarded as objective evidence of use, in so far as the President of that association is the proprietor of the mark, TOURS. The General Court found that Andema was an independent association, this being apparent from the evidence showing that Andema’s articles of association state that the President has a merely representative and administrative role, with no involvement in the issuance of certificates. 

• Finally, APART claimed that the Board of Appeal erred in finding that TOURS used the contested sign as a trade mark. Its arguments to support this case were similar to those presented in the invalidation case, namely that the sign was too simple to constitute a trade mark and consumers will not recognise it as such when used as a shape of jewellery or affixed to textile articles. The Board of Appeal and General Court found that the essential function of a trade mark could not be questioned in revocation proceedings where it was to presumed valid. The inherent validity of a trade mark can only be argued in an invalidation case.

This aspect of the ruling contrasts with a recent ruling of the UK Appointed Person (see our article here) where Lindt's registration for the word TEDDY was revoked for non-use for chocolate and related items since the mark had only been used descriptively and not as a trade mark to indicate trade origin. The word TEDDY had simply been used under the word Lindt and was not obviously a brand. Conversely, the TOUS teddy bear shape had been used directly next to the word TOUS and as a tag and other label on products indicating brand use.

The two cases illustrate the fine and often subtle line between trade mark and non-trade mark use. 

You may also be interested in our article on the IP issues engendered by deepfakes here.

We also round up other developments this month here.