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Can a trademark represented by a stylized letter integrated into the shape of a product constitute use of the sign as a trademark?

On September 6, 2024, the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) issued its decision in a dispute between Hermès International (hereinafter referred to as the “Holder”) and a German citizen, Markus Bennemann (hereinafter referred to as the “Applicant”).

This decision is particularly noteworthy as it recognizes that incorporating a trademark, specifically a stylized letter, into the shape of a product can constitute use of the sign as a trademark under Article 18(1) of Regulation (EU) 2017/1001 on the European Union trademark (EUTMR).


Facts

The proceedings began in June 2022 when the Applicant filed a revocation action against the international registration designating the EU «  » No. 1325552 (hereinafter referred to as the “contested mark”). Specifically, the Applicant argued that the mark had not been put to genuine use for the entire range of goods designated in Class 25, namely:

Men’s, women’s, and children’s clothing; boots, shoes, slippers; men’s, women’s, and children’s clothing accessories, namely hats, caps, beanies, gloves (clothing), ties (clothing), scarves, pocket squares, shawls, socks, stockings, tights, suspenders, scarf rings.

The Cancellation Division upheld the revocation request, ruling that the evidence provided by the Holder was insufficient to demonstrate genuine use of the contested mark for the full range of designated goods. Specifically, it found no evidence for most of the goods and considered that, for others, the evidence showed altered use of the mark or failed to prove its use as a trademark. In fact, according to the Cancellation Division, the sign was integrated into the shape of the products or their parts and, therefore, did not serve as an indicator of the origin of the designated goods.
In response, the Holder filed an appeal in January 2024, seeking annulment of the decision in its entirety.

The Decision

The Second Board of Appeal of the EUIPO had to determine whether the evidence provided by the Holder was sufficient to prove genuine use of the contested mark for the clothing items designated in Class 25.
First, it needed to assess whether the use of the mark on t-shirts and sweatshirts demonstrated use of the mark as registered or in a form that did not alter its distinctive character.

The Board quickly resolved this issue, finding that adding elements to the sign « »,such as lines on the sleeves of t-shirts and sweatshirts, did not alter the distinctive character of the sign, which remained clearly recognizable.

Next, the Board had to determine whether the use of the mark as the shape of a product or a part of a product—particularly in the form of scarf rings or as part of the upper portion of sandals—constituted use as a trademark, i.e., use capable of guaranteeing the origin of these goods.
It is noteworthy that the Holder had, for many years, incorporated the contested mark into various sandal models, including the iconic Izmir, Oran, and Antigua styles, which are highly distinctive of Hermès:

The Applicant argued that such use did not constitute use as a trademark, as consumers would perceive the letter "H" integrated into the shape of the sandals as a mere decorative element formed by two straps joined at the center, rather than as an identifier of the origin of the goods. In other words, according to the Applicant, the mere presence of the letter "H" would not lead consumers to associate the sandals with Hermès.

In contrast, the Holder presented market studies conducted in March 2024, which showed that a large portion of respondents identified the shape of the letter "H" as the primary identifier of the Oran, Izmir, and Chypre sandals as originating from Hermès. Moreover, the Holder argued that incorporating trademarks into the shape of sandals, especially on the upper portion, is common practice in the luxury industry, and consumers tend to identify the commercial origin of such products based on this element.

The Holder also contended that similar use of the mark on scarf rings constituted use as a trademark:

In its decision, the Board of Appeal accepted the Holder’s arguments. First, it acknowledged a certain degree of distinctiveness in the contested mark, given its registration. It further stated that while a sign could be used decoratively without being distinctive, the evidence submitted by the Holder, including the aforementioned market studies, proved that this was not the case here. Additionally, the Applicant failed to provide contrary evidence.

The Board concluded that a significant portion of the relevant public would expect trademarks to be integrated into the upper parts of sandals. Therefore, incorporating a trademark into the shape of sandals can constitute use as a trademark under Article 18(1) of the EUTMR.

Similarly, regarding use on scarf rings, the Board found that the evidence demonstrated use of the sign as a trademark.

 

Conclusion

The decision at hand demonstrates, on the one hand, how the use of a trademark in a slightly modified form, without altering its distinctive character, can validate the use of the mark as registered, in accordance with Article 18(1) EUTMR. The EUIPO thus provides an example of a modification—in this case, the addition of lines extending the sign—deemed to have no impact on the distinctive character of the mark. While EUIPO case law offers numerous examples of this kind, it is always encouraging to see that the Office continues to understand market dynamics and the commercial needs of trademark owners, acknowledging their necessity to make slight variations to their trademarks in the course of trade.
In line with the decision in question, the EUIPO First Board of Appeal recently ruled, in a revocation action against the European Union trademark " " No. 010612241 owned by Prada, that the mark had indeed been used in the form under which it was registered despite the omission of one of the lines constituting the triangle.
On the other hand, the most interesting aspect of the commented decision is the recognition that the use of a trademark in the shape of a product or part thereof can be considered use of the sign as a trademark within the meaning of Article 18(1) EUTMR. This recognition is particularly significant in the fashion industry, where trademarks are often integrated into products.
The decision also represents excellent news for non-traditional trademarks, such as those composed of a stylized letter like the one at issue, which are challenging to protect and whose distinctiveness can often be difficult to establish.

That said, the impact of this decision should be put into perspective. Indeed, consumer recognition of a trademark cannot be presumed and depends on the ability to provide high-quality evidence demonstrating its distinctiveness, particularly when integrated into products as in this case. In this regard, opinion polls and market studies—such as those presented by Hermès in this case—can serve as compelling evidence of consumer recognition of a trademark.


EUIPO, 2ème ch. recours, 6 septembre 2024, Hermès International v. Markus Bennemann, R 192/2024-2

 Par Elia CHIAPPINI

 


 Photos EUIPO©

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