Case T‑68/16

Deichmann SE

v

European Union Intellectual Property Office

(EU trade mark — Revocation proceedings — Figurative mark representing a cross on the side of a sports shoe — Position mark — Genuine use of the mark — Articles 15(1) and 51(1)(a) of Regulation (EC) No 207/2009 (now Articles 18(1) and 58(1)(a) of Regulation (EU) 2017/1001))

Summary — Judgment of the General Court (Fourth Chamber), 17 January 2018

1. EU trade mark — Surrender, revocation and invalidity — Causes of revocation — Absence of genuine use of a trade mark — Proof of use of the earlier mark — Genuine use — Definition — Criteria for assessment — Requirement of solid and objective evidence

   (Council Regulation No 207/2009, Arts 15(1) and 51(1)(a))

2. EU trade mark — Surrender, revocation and invalidity — Causes of revocation — Absence of genuine use of a trade mark — Proof of use of the earlier mark — Genuine use — Definition — Determination of a minimal quantitative use threshold — Precluded

   (Council Regulation No 207/2009, Arts 15(1) and 51(1)(a))

3. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Assessment of distinctive character — Criteria — Positional mark

   (Council Regulation No 207/2009, Art. 7(1)(b))

4. EU trade mark — Surrender, revocation and invalidity — Causes of revocation — Absence of genuine use of a trade mark — Use of the mark in a form differing by elements not altering the distinctive character of the mark — Figurative mark representing a cross on the side of a sports shoe

   (Council Regulation No 207/2009, Arts 15(1) and 51(1)(a))

1.  See the text of the decision.

   (see paras 26-29)

2.  See the text of the decision.

   (see para. 30)

3.  Concerning the classification of a mark as a ‘position’ mark, it should be noted that neither Regulation No 207/2009 on the European Union trade mark nor Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark refer to such marks as a specific category of marks. However, in so far as Article 4 of Regulation No 207/2009 (now Article 4 of Regulation No 2017/1001) does not contain an exhaustive list of signs capable of being EU trade marks, that circumstance is irrelevant to the registrability of ‘position marks’.

   In addition, it appears that ‘position marks’ are similar to the categories of figurative and three-dimensional marks as they relate to the application of figurative or three-dimensional elements to the surface of a product. It is apparent from that case-law that, when assessing the distinctiveness of a mark, the classification of a ‘position mark’ as a figurative or three-dimensional mark, or as a specific category of marks, is irrelevant.

   Moreover, it should be noted that the case-law recognises that figurative marks may in fact be ‘position’ marks.

   (see paras 32-34)

4.  See the text of the decision.

   (see paras 49, 50, 54-76)