General Court of the European Union (EU) – Proof of distinctiveness through use (T-275/21)
This decision issued October 19, 2022 by the General Court of the European Union shows once again how complex it is to demonstrate the distinctiveness acquired through the use of trademarks covering the territory of the European Union.
The trade mark concerned, registered under no. 986207, as an international trademark (designating, inter alia, the European Union) in class 18 (trunks, suitcases, handbags, satchels, etc.) is the following figurative sign:
Without recalling the history of the proceedings concerning this mark, it should be noted that the General Court of the European Union, in a decision dated June 10, 2020 (T-105/19), had already concluded, by confirming the decision of the Board of Appeal of the EUIPO, that said trademark was devoid of intrinsic distinctive character.
In the present case, the General Court also denied the applicant the possibility of acquiring distinctive character through use by finding that the proprietor was unable to show “that the contested trademark had acquired distinctive character through use in all the Member States of the Union”. In particular, the proprietor did not show “that the contested trademark had acquired distinctive character through use in Lithuania, Latvia, Slovakia, Slovenia or Bulgaria” (i.e. the part of the EU in which the sign did not possess such character ab initio).
It should be pointed out that, while the Board of Appeal was criticized in its previous decision, which gave rise to the judgment of June 10, 2020, for having based its conclusions on a limited amount of evidence, the General Court here carried out a meticulous analysis of all the elements presented by the applicant in order to assess whether they were sufficient to prove the acquisition of a distinctive character through use.
This judgment is further evidence of the importance for right holders to valorize their intangible assets by implementing a policy of managing the collection of evidence of use of trademarks in order to facilitate the constitution of a file of substantiated evidences. Our team is at your disposal to help you in this work.
For more information:
General Court of the European Union October 19, 2022 n° T-275/21