On 26 January 2011, Deichmann SE (Deichmann) applied to revoke the EU registration for the above mark owned by Munich SL (Munich), on the ground that the mark had not been put to genuine use in the EU. The action was a result of Deichmann's counterclaim in infringement proceedings before the Regional Court of Düsseldorf brought by Munich against Deichmann.
Munich provided evidence of use of the mark that was not considered sufficient by the Cancellation Division of the EUIPO, which revoked the mark in its entirety. Munich filed an appeal, and the Board of Appeal annulled the decision of the Cancellation Division and dismissed the application for revocation.
The General Court rejected Deichmann's appeal. Deichmann further appealed to the CJEU on the basis that the General Court did not determine whether the mark was a figurative or a position mark, and as a result, did not assess the evidence of use correctly.
The CJEU dismissed the appeal in its entirety and the registration remains on the register as a valid mark.
The focal issue in these proceedings was the question whether Munich's mark is a figurative or a position mark and whether that matters when assessing the evidence of genuine use.
The application was filed on 6 November 2002. The revocation action was filed on 26 January 2011 (ie before the definition of a position mark was introduced). The dispute was governed by the provisions of Regulation No 207/2009.
Deichmann's main argument was that the evidence filed by Munich was all relating to two intersecting stripes placed on a variety of sports shoes rather than to the shoe depicted in the representation of the mark as a whole. As a result, the evidence was not in fact proving use of the mark but only some part of it.
The CJEU stated that since the applicable law did not define position marks, it was not relevant whether the mark was to be considered as a figurative or a position mark. The General Court was correct in relying on the graphic representation of the mark, regardless of its classification, when assessing the evidence of genuine use.
The conclusion that the dotted lines which form the outline of the sports shoe and its laces had to be understood as enabling the position of that cross to be specified was also correct. The fact that the mark at issue has been registered as a figurative mark is not relevant for the purpose of determining the scope of the application for protection.
Particularly interesting is the fact that Deichmann referred to the EUIPO guidelines that require that a position mark is expressly described as such. The CJEU responded that they are not binding legal acts for the purpose of interpreting provisions of EU law. This may be worth noting when preparing any arguments in disputes with the EUIPO.
Overall, the CJEU concluded that the General Court did not err in law in finding that the differences between the mark at issue and the versions used on the sports shoes marketed by Munich were negligible. As such, Munich succeeded in establishing "genuine use" of its mark.
Case Ref: C-223/18