Gerecht EU: strepen op Pirelli autobanden hebben geen onderscheidend vermogen

Gerecht EU 4 juli 2017, IEF 16920; IEFBE 2241; zaak T-81/16; ECLI:EU:T:2017:463 (Pirelli Tyre SpA tegen EUIPO) Merkenrecht. In 2014 doet Pirelli Tyre SpA een aanvraag tot registratie van een Uniemerk bij EUIPO. Het merk betreft twee gelijke strepen aan de zijden van een autoband. EUIPO weigert de aanvraag op grond van het ontberen van enig onderscheidend vermogen. Het hof bevestigt de beslissing en wijst het beroep af, nu niet bewezen wordt dat het merk van de aanvrager voldoende onderscheidend vermogen verworven heeft ten tijde van de aanvraag.  

78. In the present case, the applicant submitted as evidence seeking to establish the distinctive character acquired through use of the mark applied for an extract of the Wikipedia website entitled ‘Formula One tyres’, which tells the story of Formula 1 Championships and indicates that the applicant has been the official supplier of tyres for Formula 1 Championship teams since 2011, a document taken from the applicant’s website showing the quantities of tyres bearing the mark applied for the Formula 1 Championship for the years 2012, 2014 and 2015, a document produced by Mr Sergio Battista, agent of Pirelli, showing the figures relating to television viewing of World Championship Formula 1 races, and finally, advertising material in which the mark applied for can be seen.

79. In that regard, as the Board of Appeal rightly noted, the applicant has presented none of the necessary information, such as the market share held by the mark, the duration, extent or geographic area of use, which would make it possible to prove the use of the mark applied for. The applicant merely states that it has supplied since 2011, exclusively, tyres for Formula 1 Championship teams and that, therefore, the mark applied for enjoys wide televised media coverage, accordingly it is seen by millions of viewers across the entire world. Nevertheless, it does prove that the public recognises the origin of the goods at issue thanks to the mark applied for. It is clear that it is not sufficient, for the purposes of the application of Article 7(3) of Regulation No 207/2009, that a mark has been seen by many. It is also necessary for those persons to be capable of attributing to that mark a distinctive function. None of the evidence presented provides information relating to the way in which the relevant public understands the mark.

80. In addition, it must be noted that hardly any of the evidence relates specifically to the mark applied for. Indeed, it all relates to the mark PIRELLI. It is true that the strips are affixed to Formula 1 championship racing car tyres, but they appear only in conjunction with the mark PIRELLI, which also appears on the tyres.

81. Thus, having regard to the case-law cited above, none of the evidence submitted makes it possible to show that the relevant persons or, at least, a significant proportion of these, identify, thanks to the mark applied for, the goods covered by it. The evidence submitted merely makes it possible to show that the sign for which registration was sought was used by the applicant on those goods. Nevertheless, they do not make it possible to show that the sign will be perceived by the relevant public as an indication of commercial origin of the goods covered by the mark applied for.

82. Accordingly, it must be held that the evidence adduced by the applicant does not make it possible to show that the mark applied for had acquired distinctive character through use at the time the trade mark application was submitted.

83. In the light of all the foregoing, the appeal must be dismissed in its entirety.