General Court confirms that former tennis player’s mark may remain registered for certain Class 25 goods

Article publié dans World Trademark Review

– The Board of Appeal had correctly concluded that the addition of the upper-case letter ‘Y’ followed by a full stop did notalter the distinctive character of the mark

– The fact that “sweater vests” did not have sleeves did not make it possible to identify an independent sub-category withinthe broader category of “sweaters”

– The court took into account the relatively constant marketing of the sweaters over a three-year period and the marketing strategy consisting of limited editions of clothing

On 24 January 2024 the General Court issued its decision in Noah Clothing LLC v European Union Intellectual Property Office (EUIPO) (Case T-562/22). The applicant, Noah Clothing LLC sought the annulment of the decision of the Board of Appeal of the EUIPO of 12 July 2022 in Case R 504/2021‑1.

Background

On 17 January 2007 the intervener, Yannick Noah – a famous French former tennis player and then singer – filed an application for registration of an EU trademark for the following sign for goods in Classes 18, 25 and 28:

The mark was registered on 11 February 2008 (No 5,620,968).

On 7 June 2019 the applicant filed an application for revocation of this mark on the ground that it had not been put to genuineuse in the European Union within a continuous period of five years. On 16 October 2019, 9 March 2020 and 3 December 2020,the intervener submitted before the Cancellation Division evidence of use of the mark in relation to part of the goods. On26 January 2021 the Cancellation Division revoked the mark in respect of all the registered goods, with the exception of “sportcasual shirts” in Class 25.

An appeal was filed on 9 June 2021. The EUIPO informed the intervener that the annexes were not labelled consecutively andrequested a rectification within one month. After the expiry of the prescribed time limit, the intervener submitted the remediedevidence.

On 7 October 2021 the applicant filed a cross-appeal, seeking annulment of the Cancellation Division’s decision insofar as ithad dismissed the application for revocation in respect of “sport casual shirts”. The Board of Appeal partially upheld the appeal,dismissed the application for revocation with regard to “polo shirts” and “sweaters” in Class 25, and dismissed the appeal as to the remainder as well as the cross-appeal.

Appeal to the General Court

First plea in law

The first plea in law was based on three complaints: the first related to the consideration of evidence submitted out of timebefore the Cancellation Division, the second to the consideration of evidence remedied out of time before the Board of Appeal,and the third to the infringement of the right to be heard.The Board of Appeal accepted the evidence submitted out of time, recalling that the EUIPO may disregard facts or evidencewhich are not submitted in due time by the parties. However, such a submission remains possible after the expiry of the timelimits to which such submission is subject and the EUIPO is in no way prohibited from taking account of facts and evidencewhich are submitted or produced out of time.

According to Article 10(7) of Delegated Regulation 2018/625 , in deciding whether to accept indications or evidence submittedto late, the EUIPO is to take into account, in particular, of the stage of the proceedings and whether the indications or evidenceare, prima facie , likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission ofthe indications or evidence.

In this case, the intervener submitted the first evidence of use within the time limit set by the EUIPO. The items produced on 9 March 2020 before the Cancellation Division were deemed items of evidence additional to those initially produced and primafacie relevant in the context of the dispute. Similarly, the items produced on 3 December 2020 were also considered prima facie relevant items of evidence, complementary to those produced within the prescribed time limit. Further, the fact that the applicant disputed the evidence of use, filed within the prescribed time limit, justified producing further evidence.

The Board of Appeal had considered that it was not necessary to rule on the admissibility of the documents produced by the intervener in his statement setting out the ground of appeal since those documents were identical to the evidence already submitted before the Cancellation Division, which could be taken into account in its entirety, notwithstanding the late submission.

The applicant submitted that its right to a fair trial had been infringed by granting the intervener, in practice, an extended term for the submission of evidence. The EUIPO had informed the intervener that the evidence was not correctly submitted and asked him to rectify the deficiency within one month. The intervener submitted the remedied evidence after the expiry of the prescribed time limit. Once again, it sufficed to note – as the Board of Appeal did – that the documents submitted out of time were identical to those that were already submitted to, and accepted by, the Cancellation Division. Therefore, the board had correctly found that it was not necessary to rule on the admissibility of those documents, without infringing the applicant’s rightto a fair trial.

The board had made clear that it could take into account the evidence submitted by the intervener on 3 December 2020,without infringing the applicant’s right to be heard, given that the applicant had commented on that evidence in its observations in response to the appeal. Therefore, no infringement of the right to be heard had happened.

The first plea was rejected in its entirety.

Second plea in law

The second plea in law alleged lack of genuine use of the mark at issue for “polo shirts” and “sweaters”.

The court examined the evidence provided and the arguments put forward by the parties insofar as they related to the nature and extent of the use of the mark. The Board of Appeal had observed that the majority of the pictures in the evidence submitted showed the following sign:

It had found that the addition of the upper-case letter ‘Y’ followed by a full stop before the word element ‘noah’ did not alter the distinctive character of the mark. First, that letter was already present in the figurative element of that mark and did not constitute a completely new element. Secondly, the addition of the first letter of the given name to the surname Noah did not change the distinctive character of the mark. Surnames usually have a stronger distinctive character than given names and,therefore, in both forms of the mark, the co-dominant elements were the figurative element and the word ‘noah’. The latter was likely to be perceived by consumers as a surname because, in the clothing sector, the use of surnames is commonplace.

The applicant claimed that the use of the upper-case letter ‘Y’ followed by a full stop altered the distinctive character of themark at issue as registered. The court found that the upper-case letter ‘Y’ followed by a full stop before the word ‘noah’constituted a repetition of an element already present in the figurative element of the mark. Secondly, that letter was placed below the figurative element, which dominated the overall impression both of the mark as registered and of the modified mark, with the result that, although it was not negligible, it occupied a secondary position in the perception of that mark.

Therefore, as regards the conceptual meaning of the mark at issue, the word element ‘noah’ may be perceived, both in the registered form and the modified form, as a surname that refers to a specific person. The addition of the first letter of the given name merely reinforced the reference to the intervener.

Consequently, the mark, in its form used in the course of trade, could be regarded as broadly equivalent to the mark asregistered. Therefore, the board had correctly concluded that the addition of the upper-case letter ‘Y’ followed by a full stop didnot alter the distinctive character of the mark.

Further, the board had found that the mark had not been expressly registered for “sweater vests”. Those goods fell, however,under the broader category of “sweaters”, for which the mark was registered. The board added that the fact that those goodsare sleeveless did not permit the inference that they fell within a sub-category of “sleeveless sweaters”. The use of the latter was thus sufficient to establish use for the entire category of “sweaters”.

The applicant claimed that “sweater vests” are sports articles that should be classified as “spencers”, which are very specific goods that do not cover the entire category of “sweaters”, and maintained that genuine use for those goods did not follow from the intervener’s intentions insofar as the applications for the French word marks NOAH and Y. NOAH, filed between 2015 and 2020, did not refer to “sweaters”.

With regard to the relevant criterion to apply for the purposes of identifying a coherent sub-category of goods or services, the criterion of the purpose and intended use is essential. The court noted that “sweaters” are clothes intended to cover the upperpart of the body. The absence of sleeves does not therefore alter either the purpose or the intended use of the goods in that category. “Sleeveless vests” could not, therefore, constitute an independent sub-category within the broader category of“sweaters”. The Board of Appeal was thus fully entitled to find that the fact that “sweater vests” did not have sleeves did not make it possible to identify an independent sub-category within the broader category of “sweaters” in Class 25.

The board had found that the only goods for which the invoices and the statement about sales revenue could be cross-referenced with depictions of goods bearing the mark were “polo shirts” and “sweater vests”. The applicant claimed that the board misinterpreted the evidence of use provided by the intervener.

In order to examine whether use of a mark is genuine, an overall assessment must be made, taking account of all the relevant factors in the particular case. Each piece of evidence is not to be analysed separately, but rather together. It cannot be ruled out that a grouping of items of evidence may allow the necessary facts to be established, even if each of those items, individually, would be insufficient to prove the accuracy of those facts. In the present case, the absence of invoices alleged by the applicantfor a specific model of polo shirt did not preclude a finding that there had been genuine use of the mark for that product. Although no invoice has been produced for that model, it appeared in the statement about sales revenue and in other evidence provided by the intervener.

Further, the applicant did not claim that the intervener did not provide invoices for the other “polo shirts” and “sweater vests” referred to by the board in support of its reasoning. It could not therefore validly dispute the assessment resulting from the cross-references made by the board between the invoices produced and the representation of the majority of the goods.
In those circumstances, the argument based on the failure to produce invoices for one of the polo shirts was not sufficient to invalidate the board’s assessment that “polo shirts” and “sweater vests” were the only goods for which the invoices and the statement about sales revenue could be cross-referenced with depictions of goods bearing the mark.

Lastly, as regards the applicant’s claim that the evidence was insufficient insofar as the depictions of the goods were drawings and not photographs, the fact that the product was represented graphically and not photographically was not sufficient to invalidate the board’s assessment.

The board had found that the documents, taken as a whole, proved a sufficient extent of use of the mark for “polo shirts” and“sweaters”. The board referred to the statement about sales revenue in the years 2015 to 2019. The sales figures were supported by invoices, advertisement campaigns and press articles. Moreover, the relatively low sales figures were justified by the fact that the mark was used for a limited edition of clothing. The use of the mark was regular and concerned a long period of time so that it served a real commercial purpose.

The applicant also claimed that the board had not correctly assessed the extent of use of the mark for “polo shirts” and “sweaters”. In particular, it stated that, in the economic sector of fashion and sports clothing, the sales volumes, namely 1,768 polo shirts and 127 sweater vests allegedly sold in five years, were too low to prove genuine use.

As regards the extent of use, the question of whether use is quantitatively sufficient depends on a number of factors and on a case-by-case assessment and it is not possible to determine, a priori and in the abstract, what quantitative threshold should be chosen to determine whether use is genuine or not. Thus, when it serves a real commercial purpose, even minimal use of the mark can be sufficient to establish genuine use.

As regards the extent of use of the mark at issue for “polo shirts”, the court noted that the sales revenue represented €87,302.79 and corresponded to a sales volume of 1,940 articles, namely 172 in 2015, 878 in 2016, 360 in 2017, 187 in 2018 and 343 in 2019. Such volumes appeared sufficient to constitute genuine use in view of the strategy of marketing limited editions of polo shirts. Further, those sales revenues showed regular use of the mark throughout the relevant period, and the marketing of the polo shirts during the relevant period was supported by advertising campaigns and press articles.

As regards the extent of use of the mark for “sweaters”, the sales revenue represented an amount of €3,446.08 and corresponded to a sales volume of 127 articles over a period of three years. It is sufficient that a trademark should have been put to use during a part of the relevant period to establish genuine use.

The mark at issue was used to market sweaters for a continuous period of three years, which represented a sufficiently long period to find use that objectively was such as to create or preserve an outlet for the goods in question. Even though it was true that the number of sales of “sweaters” was low, the purpose of the requirement of genuine use is not to assess commercial success of an undertaking or review its economic strategy, nor is it to restrict trademark protection to the case where large-scale commercial use has been made of the marks. Likewise, even minimal use can be sufficient to be classified as genuine, provided that it is regarded as warranted, in the relevant economic sector, as a means of maintaining or creating market share for the goods or services protected by the mark.

In light of the relatively constant marketing of the sweaters over a period of three years and the intervener’s marketing strategy consisting of a limited edition of clothing, the relatively low volume of sales of those sweaters was not capable of establishing that the use was merely token.

The second plea was thus rejected.

Third plea in law

In its third plea in law, the applicant claimed that the Board of Appeal had incorrectly dismissed its cross-appeal in relation to “sport casual shirts”.

Since it followed from the analysis of the first two pleas in law that the board was fully entitled to find that the proprietor of the mark had established genuine use of the mark for “polo shirts” as a sub-category of the broader category of “shirts” in Class 25,the court held that the board had correctly dismissed the cross-appeal.

The action was dismissed in its entirety.

This article first appeared on WTR Daily, part of World Trademark Review, in February 2024. For further information, please go to www.worldtrademarkreview.com.