Il Tribunale UE su marchi UE e procedimento di decadenza

In 1999, The Topps Company, Inc., obtained from the European Union Intellectual Property Office (EUIPO) registration of a three-dimensional trade mark consisting of the shape of a baby's bottle in respect of goods in the candy sector.

In 2018, an application for revocation alleging a lack of genuine use [1] of that mark was filed with EUIPO; that application was granted by the Cancellation Division and confirmed by the Board of Appeal of EUIPO.

In 2022, the contested mark was transferred to The Bazooka Companies, Inc., which thus became the applicant before the General Court.

By the present judgment, the Court annuls the decision of the Board of Appeal and clarifies the differences between the terms ‘shape' and ‘form' used in the English-language version of Regulation 2017/1001. In addition, it summarises its case-law regarding alteration of the distinctive character of a three-dimensional mark and its joint use with another mark.

Findings of the Court

As a preliminary point, the Court notes that the English-language version of Regulation 2017/1001 uses, on the one hand, the word ‘shape' to state that an EU trade mark may consist, inter alia, of the shape of goods or of the packaging of goods, [2] and, on the other hand, the word ‘form' to designate use of the mark in a form differing in elements which do not alter the distinctive character of that mark. [3]

In the first place, the Court considers that no variation between the form of which the contested mark as registered consists, that is to say, the three-dimensional ‘shape', and the form of which the contested mark as used consists can be regarded as significant. Both marks have the shape of a baby's bottle, including a teat, a serrated surface and a lid, and will be perceived by the relevant public as identical.

In the second place, the Court holds that the word and figurative elements that cover the contested mark as used have not led to use in a ‘form' differing from that mark as registered, since they do not alter the distinctive character of the mark. Those elements do not call into question the fact that their addition may be regarded as having given rise to use of that mark in an acceptable variant.

To reach that conclusion, the Court relies on the fact that, in order for the use of a mark that is used only as part of a composite mark or in conjunction with another mark to be covered by the term

‘genuine use', that mark must continue to be perceived as indicative of the origin of the goods at issue. Furthermore, it is for the proprietor of the mark to prove that that mark alone, as opposed to any other trade mark which may also be present, identifies the particular undertaking from which the goods originate. In addition, the fact that the relevant public might recognise the mark being contested by referring to another mark which designates the same goods and is used in conjunction with the mark being contested does not mean that the latter mark is not used as a means of identification in itself.

In the light of those considerations, the Court finds, first of all, that the addition of elements to the surface of the contested mark as used does not alter that mark's form as registered, since the consumer can still distinguish the form of the three-dimensional mark. Next, it states that the fact that another mark may also facilitate the determination of the commercial origin of the goods in question is not at odds with the fact that it may not alter the distinctive character of the three-dimensional mark. Otherwise, the relatively common addition of a word element to a three-dimensional mark, which may still facilitate the determination of the commercial origin of the goods covered, would necessarily imply an alteration of the distinctive character of that three-dimensional mark. In addition, not only is the combination of a three-dimensional form with additional word or figurative elements common in the relevant sector, but also it is inconceivable from a commercial and regulatory point of view to sell goods without any label on their surface.

Furthermore, as regards the figurative and word elements included on the contested mark, the Court states that one part of those elements alludes to the baby's bottle shape of which the contested mark consists and that the other part is weakly distinctive.

Lastly, as regards the fact that the contested mark as used has various colours while it was registered without colour, the Court considers that colours possess little inherent capacity for communicating specific information. They will therefore be understood as purely aesthetic elements or as presentational features and not as indicative of the commercial origin of the goods.

[1] For the purposes of Article 58(1)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).

[2] First paragraph of Article 4 of Regulation 2017/1001.

[3] Point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001.