Use of a trademark in a different form than registered and risk of losing rights

During a trademark opposition proceeding, the applicant of the opposed trademark can ask the owner of the earlier trademark, on which the opposition is based, to prove the serious and effective use of the title in relation to the goods and services for which it was registered. In lack of proof, the opposition is rejected.

Pursuant to art. 10 (3) EUTMDR, information, proof and documents necessary to prove such use consist of information related to the place, time, extent and nature of the use of the trademark.

On the basis of these criteria, after a complex evaluation of the proof transmitted by the opponent, the Opposition Division, charged with case B 3 065 799, found the effective use of the earlier trademark, accepting, although partially, the opposition.

Nevertheless, the EUIPO Fourth Commission of Appeal, in light of the appeal later brought by the applicant of the opposite trademark, overturned the decision issued on first instance.

In particular, the Commission of Appeal established that the opponent did not provide proof of effective use of the trademark as they referred to a version that differed, in substantial elements, from the version correspondent to the one registered.

The opponent filed an appeal before the EU Court, asking for the annulment of the appeal decision, observing that the used sign did not alter the distinctive character of the trademark as it was registered.

First of all, the EU judge, invested with the issue, observed that the regulation does not request for a perfect identity between the used trademark and the registered one.

On the contrary, the regulation allows the owner of the trademark to make changes to the sign – without altering its distinctive character – in order to adapt it better to the marketing needs and to promote the goods and services.

Nevertheless, one shall list the differences between the used trademark and the registered one and evaluate their impact in order to establish if the distinctive essence of the registered trademark is present, lacking or modified.

In the case examined, the opponent’s trademark  consisted of a figurative sign made up of a rectangle divided in two parts: to the left, a blue rectangle with the letters T and E with a white outline and, to the right, a black rectangle with the letters M and A, each letter in a different font, both in white.

It was considered that this specific graphic stylization (constituted by the contrast between the colors combination and the specific stylization of the letters) was responsible for the immediate and lasting impression on consumers, as to confer its distinctive character to the sign.

For such reasons, it was thought that the use of the trademark in the different version and  would alter, effectively, the distinctive character of the registered sign.

As a matter of fact, the “used” signs were not characterized by that particular graphic stylization of the registered trademark. The intervened changes could not be considered irrelevant and the confronted signs could not be considered therefore equivalent.

The differences found in the signs changed the distinctive character of the previous registered trademark. As a consequence, the Court, sticking to the decision of the EUIPO Appeal Board, rejected completely the appeal.

Giulia Mugnaini