General Court assessment

The GC held that classification of the mark at issue as “figurative” did not bar it from being treated as a “position mark” (see our previous post). In this sense the graphic representation of the mark (shown below) clearly identified, in solid lines, the elements intended for protection and, in dotted lines, the outline of the goods at issue, featuring that element.

So, the actual subject-matter of the mark is the cross device and protection of the shoe silhouette is not sought. Contrary to the Appellant´s claim, therefore, the mark (i.e. the cross device) had been put to genuine use for sports footwear, as shown in the samples below.

Court of Justice decision

The Appellant relied on a single ground of appeal, claiming that, by disregarding the position mark/figurative mark status, the GC did not correctly determine the subject matter of the mark and so incorrectly assumed that the mark had been put to genuine use.

The CJEU rejects the ground of appeal and upholds the GC’s view that the classification of the mark as figurative rather than position was irrelevant in assessing the genuine use. In fact it could be inferred directly from the graphic representation of the mark, with sufficient precision, that protection was sought only for a cross, consisting of two black intersecting lines, represented in solid lines.

The CJEU also established that registration of the mark as “figurative” was not relevant for the purpose of determining its actual scope of protection either.

Comment

At least in the EU, dotted or broken lines are normally used to specify the position of a sign (or a design) in relation to a certain item. In line with this, the CJEU takes the logical view that when it comes to marks featuring dotted lines, a common sense (rather than a formalistic) approach must be adopted in order to define the scope of the protection sought. This approach applies even if the mark was applied for as “figurative” and did not include a description intended to disclaim the dotted line elements.

According to this common sense approach, the elements represented in dotted lines would be excluded from the subject-matter of the sign and the owner would be required to prove genuine use of the part of the mark in solid lines only.

The Deichmann judgment is a positive decision for right holders and improves the possibility of effectively defending and enforcing marks which, although granted as “figurative”, are in essence “position marks”.

Authored by Imogen Fowler and Vito Pati