Duty of examining a mark in the registration stage – judgement of the EU Court in the case of Indeutsch International, Case T-20/16

On 15 February 2010, the company M/S. Indeutsch International (Applicant) filed figurative EU trademark:

for “knitting needles” and “crochet hooks” belonging to the 26th class of the Nice Classification. EUIPO registered the aforementioned mark, however an application for declaration of invalidity of the trademark in question was filed on the basis of the lack of distinctive character of the registered sign.

As a consequence, after thorough examination of the case, the Cancellation Division’s conclusion was that the graphic representation of the registered sign is clear, precise, complete, easily accessible, comprehensible, durable and objective, i.e. fulfills the requirements of Regulation No 207/2009 of 26 February 2009 on trade marks of the European Union. Moreover, the mark in question is distinctive. On the appeal stage, the Board of Appeal annulled the decision of the Cancellation Division on the grounds that the contested mark was devoid of any distinctive character. The Board of Appeal issued a decision preceding the findings that the contested mark, as defined by its proprietor as a ‘chevron trade mark’, represented a pattern placed on particular pieces of goods or covered the whole of their surface and consequently considered that the decorative appearance of the contested trademark would cause that the relevant public, consisting of average users of knitting needles and crochet hooks, would perceive the trademark as a decoration of those goods or as the material from which the goods are made (i.e. wood) and not as an indication of a commercial origin.

The EU Court stated that the Board of Appeal’s assessment of the distinctive character of the registered mark was, in fact, not based on the characteristics of the trade mark in its registered form, but on the characteristics of the external appearance of the applicant’s goods which, according to the Board of Appeal, was how that trademark was used. The Court stated that the examination of the distinctive character of a trade mark must therefore be made taking into account the trade mark in registered form or in the form in which it appears in the application, irrespective of the manner in which it is used.

Consequently, by a judgment of 21 June 2017, the Court annulled the contested decision. It therefore shared the objection of the applicant, arguing that the Board of Appeal, on the basis of the patterns appearing on the surfaces produced by the Applicant for knitting and crochet hooks, assessed the distinctive character of the contested trade mark in breach of Art. 7 sec. 1 item b) of Regulation No 207/2009.

By: Michał Ziółkowski

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