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This article first appeared on WTR Daily, part of World Trademark Review, in August 2019. For further information, please go to www.worldtrademarkreview.com 

  • In proceedings for the cancellation of mobile.de’s MOBILE.RO mark, Rezon was asked to provide genuine use of the earlier mark MOBILE
  • The board of Appeal found that genuine use of the earlier mark had been demonstrated and annulled the disputed mark in Classes 35 and 42
  • The General Court confirmed, finding that the mark as used did not alter the distinctive character of the mark as registered

On 12 July 2019 the General Court issued its decision in mobile.de v European Union Intellectual Property Office (EUIPO) (Case T-412/18).

Background
mobile.de GmbH (‘the applicant’) obtained the registration of the following EU trademark in Classes 35 and 42:

Rezon (‘the intervener’) filed a cancellation action before the EUIPO on the basis of its earlier national Bulgarian mark, depicted below, in Classes 35 and 42:

The applicant requested that the intervener provide proof of use of the earlier national mark, which was accepted by the office. The Cancellation Division then found that there were no similarities between the services covered by the marks and, therefore, no risk of confusion between the signs. The intervener formed an appeal with the EUIPO, which declared that the mark at issue was invalid.
The applicant appealed on the ground that the Board of Appeal had erred in its assessment of:

  • the genuine use of the earlier mark;
  • the similarities between the services; and
  • the bad faith of the intervener when applying for the earlier mark.

 

General Court decision

Before the court, the applicant first argued that the genuine use of a national mark must be evaluated according to national law, and not according to EU law. The court recalled that the criteria for the determination of the genuine use of a mark in the European Union are also applicable to national trademarks.
Further, the applicant argued that the use made of the national mark by the intervener did not amount to use of the mark as filed, since, in the documents submitted to prove genuine use, the intervener had relied on its use of a word mark, rather than of its semi-figurative registered trademark. Moreover, the applicant submitted that, as the term ‘mobile’ is descriptive of the services at issue, the only distinctive element was the rectangle surrounding that word. Therefore, use of the verbal element without the rectangle did not amount to genuine use.
The court rejected this argument, recalling that, in order to make a finding of alteration of the distinctive character of a mark, a global assessment of the distinctive and dominant characters of the added elements had to be carried out. Additionally, Regulation 2017/1001 permits the owner of a trademark, in the commercial exploitation of the mark, to make variations which do not alter its distinctive character. Thus, if the sign as used and the sign as registered are considered to be globally the same, the modifications made to the accessory elements of the sign as registered do not prevent the owner to establish genuine use. In the present case, the documents submitted to prove use of the sign, with the addition of a coloured letter or the presence of a rectangle, nevertheless established proof of use of the earlier mark.
With regard to the applicant’s argument concerning the nature of the evidence filed, the court noted that there is genuine use where a mark guarantees the origin of the goods or services for which it was registered. Considering the relevant public and the use of the mark in the economic sector concerned, the court held that there was genuine use.

With regard to the applicant’s argument regarding the similarity of the services, the court recalled that, if an application designates a general category of goods and services, but use is shown only for a sub-category which is autonomous and distinct, protection is afforded to the sub-category only. Otherwise, protection of the mark would be unduly extended. On the other hand, if use is shown for a sub-category that is complementary to the general category, then protection would be extended to the latter. In the present case, the court considered that the
“advertising services in connection with vehicles” covered by the earlier mark and the “gathering of information” services covered by the disputed mark were complementary. Therefore, proof of use for one type of services was also valid for the other.
Finally, the court rejected the argument that the national mark had been filed in bad faith due to the presence of other earlier marks owned by the applicant. The court held that it was for the national courts to decide on this matter.
In light of the above, the court dismissed the action.
Comment
The decision shows the importance of using a mark as filed. If the use concerns a sub-category of goods or services, as opposed to the general category filed, an imbalance in protection may occur: effective protection will cover only the sub-category at issue, and not the general category. This should be taken into consideration when preparing the wording of the goods and services in trademark applications, and in relation to the intended use of the mark.
The decision is also a reminder that the primary function of a trademark is to identify origin and, therefore, to be exploited commercially. Therefore, the court took into consideration the possibility of modifying signs in the context of a trademark owner’s commercial development. As such, the court accepted that an insignificant modification that does not affect the distinctive character of the sign does not require a new filing in order to demonstrate use.

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