Gucci's international GG marks revoked in Benelux following 'harsh' decision
To reduce the total number of trademarks and, consequently, the number of conflicts arising between them (see recital 9 of the Trademarks Directive (2008/95/EC)), trademarks are subject to an obligation of genuine use (see Article 12 of Directive 2008/95, Article 2.26.2(a) of the Benelux Convention on Intellectual Property and Article 15(1) of the Community Trademark Regulation (207/2009)). However, a trademark is often the first contact a consumer has with a product or service, and it must therefore be attractive and adapt itself to the latest trends.
In other words, in order to last, a trademark must go through a process of modernisation. At the same time, a trademark holder must maintain the attractiveness of each of its trademarks by modernising them and ensuring that each modified sign retains its distinctive character.
Different pieces of legislation take this dilemma into account and provide that, to assess whether a trademark is effectively used, one can take into account the “use of the trademark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered” (see Article 10 of Directive 2008/95, Article 2.26.3(a) of the Benelux IP Convention and Article 15(1)(a) of Regulation 207/2009).
However, the question of whether the distinctive character of a trademark has been altered remains open to discussion. A recent judgment from the Commercial Court of Brussels offers a good example of the uncertainties that prevail in case law in this respect.
The dispute involved well-known Italian fashion company Gucci and German company Gerry Weber, which also sells clothing and women accessories. Gerry Weber filed a revocation claim based on Article 2.26.2(a) of the Benelux IP Convention against Gucci’s international registrations Nos 432186 and 468535 (depicted below), before the Commercial Court of Brussels:
Unable to prove any use of these registrations, Gucci claimed that the use of its Community trademark (CTM) No 9604653, depicted below, could be considered as use of its two international registrations:
The Commercial Court of Brussels dismissed Gucci’s claim, stating that the CTM could not be considered as an acceptable variation of the international registrations. The court noted that the two Gs were written in a different style and did not “meet each other” in the CTM, contrary to the international registrations. These differences led the court to decide that the CTM was not a modernised version of the international registrations. For this reason, Gucci's rights in the international registrations were revoked for the Benelux countries.
To assess this case, it is necessary to review the recent case law in this area. Since the Gucci judgment does not concern the use of a trademark within a complex trademark, that subject will not be considered here (that topic was addressed by the Court of Justice of the European Union in Specsavers (Case C-252/12) and Levi Strauss) (Case C-12/12). Similarly, the fact that a new trademark is registered does not mean that this new trademark cannot be considered as a modernised version of a previously registered trademark (see Rintisch (Case C-553/11)).
This article will thus focus on the question of which modifications are considered acceptable in the sense of Article 12 of Directive 2008/95 and Article 2.26.2(a) of the Benelux IP Convention.
It is generally acknowledged that negligible differences, such as differences in the style of a sign, are not considered to alter a trademark. For instance, the General Court of the European Union has previously decided that:
“where the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trademark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade” (see Il Ponte Finanziaria v OHIM (Case T-194/03), Paragraph 50; see also Atlas v OHIM (Case T-482/08)).
The addition of colours cannot be considered as an alteration of the trademark as long as the overall impression remains the same (see TMS v OHIM (Case T-152/11, Paragraph 41)).
In Belgium, the Commercial Court of Brussels (RG A/04/09922, December 12 2005) has also ruled that mere modifications of the style of a trademark do not imply an alteration of the trademark. This reasoning is in line with the General Court’s case law (see J&F v OHIM (Case T-324/09), Paragraph 36).
The determination of the dominant and distinctive elements of a trademark is of crucial importance when assessing whether the distinctive character of a trademark has been altered. For instance, if the modification affects a trademark’s dominant element, it is more likely that there will be deemed to have been an alteration. Along the same lines, the addition or deletion of a trademark’s highly distinctive or dominant element is likely to alter its distinctive character. On the contrary, the addition or deletion of a purely descriptive element is not likely to have any consequence.
For instance, the General Court has already decided that the addition of purely descriptive terms, such as 'company' or 'ranger' (for kids’ clothes) was a negligible difference (see, eg, TMS v OHIM; GfK v OHIM (Case T-135/04); Epcos v OHIM (Case T-132/09)). In the same vein, the General Court has also decided that a descriptive element “written in small characters and occupying a secondary position, at the bottom of the sign” (GfK v OHIM, Paragraph 37) could not be considered as altering a trademark’s distinctive character.
The alteration of the conceptual meaning of a trademark can also play a role. For instance, the General Court has decided that the verbal sign FRUIT OF THE LOOM cannot be considered as a modernisation of the verbal sign FRUIT (Fruit of the Loom (Case T-514/10), Paragraph 33).
On the contrary, when an additional element shares the same conceptual meaning as that of the dominant or distinctive element of a sign, there is no alteration of the trademark’s distinctive character (Atlas v OHIM, Paragraph 40).
In view of this case law, the Gucci judgment seems harsh. Arguably, the distinctive character of the trademark resides in the two interlaced Gs. The fact that the trademark’s style has been modified constitutes only a minor and negligible difference. The only noticeable difference is the fact that the two Gs do not touch each other in the new sign. This modification is, again, a negligible difference that does not alter the distinctive character of the sign.
Except for the modification in the style of the trademark, no substantial element was added or deleted. Moreover, the overall impression and the conceptual meaning of the trademark remained the same. Therefore, CTM No 9604653 could, arguably, be legitimately considered as an acceptable variation of the international registrations.
The strict approach adopted by the Commercial Court of Brussels (in contradiction with its previous case law) could lead to the absurd situation where any modernisation of a trademark - which often consists of a slight modification of its style - would be considered as altering the distinctive character of that trademark. This outcome is clearly against the balance that must be struck in trademark law between modernisation and the obligation of use.
Virginie Fossoul, ALTIUS, Brussels
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