Toch normaal gebruik van kruis op sportschoenen

Gerecht EU 17 januari 2018, IEF 17435; IEFbe 2460; ECLI:EU:T:2018:7; T‑68/16 (Deichmann SE tegen EUIPO) Merkenrecht. Beeldmerk. In 2004 is heeft Munich SL een beeldmerk voor sportschoenen met een kruis gedeponeerd. In 2011 doet Deichmann SE een verzoek tot vervallenverklaring vanwege niet normaal gebruik. In 2014 wordt, ondanks tegenbewijs van Munich SL, het merk vervallen verklaard. De Kamer van Beroep acht het bewijs wel voldoende om van normaal gebruik te kunnen spreken en vernietigt de vervallenverklaring. Deichmann SE stelt dat de schoenen die op het bewijsmateriaal te zien zijn, weliswaar op de schoenen van het beeldmerk lijken, maar niet dezelfde zijn. Het Gerecht acht het bewijs dat Deichmann SE hiertoe aandraagt onvoldoende en verwerpt het beroep.

41      It should be noted that that is how dotted lines are normally used in similar situations, namely for various goods on which a mark is affixed, without necessarily detailing all of the outline or other characteristics of those goods (judgments of 7 February 2007, Kustom Musical Amplification v OHIM (Shape of a guitar), T‑317/05, EU:T:2007:39; by analogy, of 14 June 2011, Sphere Time v OHIM — Punch (Watch attached to a lanyard), T‑68/10, EU:T:2011:269, paragraphs 62 to 64; of 26 February 2014, Sartorius Lab Instruments v OHIM (Yellow curve at the bottom edge of an electronic display unit), T‑331/12, EU:T:2014:87; and of 14 March 2014, Lardini v OHIM (Affixing of a flower to a collar), T‑131/13, not published, EU:T:2014:129; see also, to that effect, judgment of 4 December 2015, K-Swiss v OHIM (Representation of parallel stripes on a shoe), T‑3/15, not published, EU:T:2015:937; and, by analogy, judgment of 21 May 2015, adidas v OHIM — Shoe Branding Europe (Two parallel stripes on a shoe), T‑145/14, not published, EU:T:2015:303).

42      In the present case, the use of a dotted line was clearly intended to demonstrate that only the protection of the cross, represented in solid lines, was covered by the mark at issue, and indeed in a specific position on the sports shoes. Besides, it is apparent from the judgment of 12 November 2013, Gamesa Eólica v OHIM — Enercon(Blended shades of green) (T‑245/12, not published, EU:T:2013:588, paragraph 38) that there is no rule requiring the outline of a sign to be represented by dotted lines in order to indicate, where appropriate, that that outline is not protected. The use of dotted lines in the present case may be interpreted as permitting a clearer delimitation of what constitutes the mark at issue.

43      It can be concluded that, if the mark at issue is intended to protect a representation of a cross comprised of two solid intersecting black lines, that protection is not claimed in the abstract but for the application of the graphic design at issue on the side of a sports shoe, as appears on the registration application form, with a contrast in colour in relation to the shoe itself. The shape of the shoe, as such, is not covered by the mark, nor the type of sole used.

44      Accordingly, contrary to the applicant’s submission, the Board of Appeal was entitled to take the view that ‘in so far as [it was] the graphic representation that defin[ed] the mark, ... whether the mark is a position mark or a figurative mark is irrelevant’ (see paragraph 12 above). The Board of Appeal was also entitled to proceed on the basis that the mark at issue could not be dissociated from the shape of a part of the goods in respect of which it was protected, namely the upper part of a sports shoe, and that the determining factor in the light of the scope of its protection was the way in which it will be perceived on the sole basis of the sign as registered.

45      In addition, it must be held that that conclusion is not undermined by the applicant’s reference to the decision of the Fourth Board of Appeal of EUIPO of 6 July 2016 (Case R 408/2015–4), the factual and legal circumstances of which are different to those of the present case.

46      In that regard, the intervener’s criticism concerning the absence of translation of the abovementioned decision into the language of the case and its claim concerning the inadmissibility of the applicant’s reference to that decision must be rejected as unfounded. First, the applicant directly translated into English the relevant part in its request for a hearing of 5 September 2016. Secondly, that decision is published in its entirety in English on EUIPO’s website. Furthermore, in reply to a question from the Court at the hearing, the intervener confirmed being aware of the text of that decision.

47      Furthermore, it should be noted that, unlike in the present case, in the case that gave rise to the decision of the Fourth Board of Appeal of EUIPO of 6 July 2016, the goods covered by the trade mark application were not limited to ‘sports footwear’ but also included other goods in Class 25, such as ‘clothing, ... caps, belts or gloves’. Therefore, the question whether the mark bearing a kind of graphic design consisting of two parallel lines changing direction several times and placed on the side of a sports shoe had a connection with the form of the goods covered is framed differently to the question in the present case, where it has been found that the mark at issue cannot be dissociated from the form of a part of the goods, namely, the upper of a sports shoe (see paragraphs 12 and 44 above).

48      Accordingly, the applicant’s reference to paragraph 17 of the decision adopted in Case R 408/2015–4, where it was held that the mark was a figurative and not a ‘position’ mark, does not permit an analogy to be drawn with the present case. Furthermore, it should be added that, in any event, in paragraph 18 of that decision, the Board of Appeal stated that the question of whether the mark applied for should be considered to be a ‘position’ mark was not relevant for the purposes of its assessment.

49      Having regard to all the foregoing considerations, it must be concluded that the Board of Appeal did not err, in the present case, in assessing whether the sports shoes, the sales of which were proved through various pieces of evidence concerning genuine use of the mark at issue, contained a graphic element consisting of a motif in the form of a specific cross placed on a particular part of the surface of the designated product which could be considered to be either identical, or corresponding to the graphic element appearing on the representation of the mark at issue, in accordance with Article 15(1)(a) of Regulation No 207/2009.