The Court of Justice of the European Union (CJEU) recently confirmed that when assessing the actual use of a mark and the scope of protection afforded by a trade mark, the defining factor is the way in which it is perceived, and it is irrelevant that it is classified as a figurative or a position mark. In the CJEU’s decision in ECLI:EU:C:2019:471, the CJEU rejected German shoemaker Deichmann’s appeal to have Spanish competitor Munich SL’s trade mark revoked. The case revolves around the registered mark below, depicting a solid line cross on the side of a dotted outline of a shoe.

Deichmann’s arguments to get the mark revoked included arguing that the registered mark had not been genuinely used as it was not able to be regarded as a position mark owing the fact it was registered as a figurative mark. The trade mark was registered merely as a depiction of two crossed stripes on a sports shoe, with laces and no sole, and as such the rights owed to the figurative mark should be revoked due to it not being used in commerce in such form.

The key factor in the General Court’s initial decision, which was confirmed by the CJEU, was to determine the exact nature of the mark and then assess the consequences that came from that. The CJEU agreed that figurative marks could be position marks as:

“position marks are similar to the categories of figurative and three-dimensional marks as they relate to the application of a three-dimensional element to the surface of a product that when assessing the distinctiveness of the mark, the classification of a position mark as a figurative or 3D mark or as a specific category of mark is irrelevant.”

The CJEU reiterated that marks should be registered in any appropriate form given the technology available, “as long as it can be reproduced on the register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner.” While it acknowledged that when dotted lines are used a description or disclaimer is often added to delimit the scope of protection sought, it could be directly inferred that the graphic representation sought to protect only the black cross represented in the solid lines.

Key takeaways

The CJEU’s decision confirmed that position marks are wide in scope and the fact that the manner a mark is filed or categorized does not limit the scope of protection due. However, if a position mark is subject to a non-use action it does not receive any special treatment for being positional and remains subject to the same criteria as a figurative mark.

The ruling also enforced the position that when marks require “disclaimed elements” (such as the dotted line) these do not form part of the protected mark but will be used to evaluate any infringement of the claim to understand and assess the essential characteristics of the mark (ie the cross is used in the context of a shoe). The clarity gained from this case will undoubtable be welcomed by many owners of position marks and provides guidance on ways to protect position marks in the future.