Hyphen GmbH is the owner of an EUTM registration for the following figurative sign in black and white:

Click here to view the image.

The mark is registered for the following goods and services in Classes 3, 5, 9, 24, 25 and 42:

  • Class 3: ‘Soaps; perfumery, essential oils, cosmetics’;
  • Class 5: ‘Pharmaceutical, veterinary and sanitary preparations’;
  • Class 9: ‘Airtight clothing affording protection against accidents, radiation and fire, anti-glare devices, anti-glare visors, glasses (optical devices), cases for glasses and contact lenses, frames for glasses, frames for glasses, lenses for glasses, optical contact lenses, timekeeping instruments’;
  • Class 24: ‘Textile and textile goods (included in Class 24)’;
  • Class 25: ‘Clothing, footwear, headgear’;
  • Class 42: ‘Development and design of all types of textile products, in particular clothing, headgear, accessories, footwear and bags, graphic arts services, industrial design services, development of products for protection against solar radiation’.

In October 2012, Skylotec GmbH filed a revocation action against Hyphen on the grounds of non-use. One of the arguments made in that regard was that the mark was not used in the form in which it had been registered. In particular, whilst the registered mark was for the “bowtie” shape on its own, the form of the mark as used included the use of an ellipse which surrounded the bowtie. Other variants included the use of a light blue colouring and the word “Hyphen C” placed below the symbol. See below for these examples.

Click here to view the image.

Having considered these arguments, the Cancellation Division dismissed the application for revocation in relation to at least some of the goods and services. It held that, although the variant signs as actually used by Hyphen showed some differences from the simple “bowtie” form that had been registered, those differences were not sufficient to depart from the distinctive character of the registered mark. In particular, the use of the ellipse was held to be a “banal decorative component” which did not itself have any distinctive character. Consequently, the use of the variants did constitute relevant use in the course of trade.

Skylotec GmbH appealed the decision. The Board of Appeal reversed the decision of the Cancellation Division and revoked Hyphen’s rights for the remaining goods and services. In coming to this decision, the Board of Appeal concluded that Hyphen had failed to prove that the mark as registered had actually been used because of the differences between the registered mark and the form as actually used in trade.

In particular, the Board of Appeal considered that the mark was a purely graphical sign arranged in an extremely simple manner that could potentially be perceived as a dog bone or a dumbbell. Further, it held that where a sign was extremely simple (as was the case with the Hyphen logo) even small additions or alterations to the mark as registered would have the effect of altering the overall impression produced by the sign. The Board of Appeal took the view that the ‘distinctive character’ was not tied to the concept of the ability of the mark to serve as an indicator of origin but simply to the overall impression. The Board then held that “in the overall impression produced, the form used has a clearly different effect. [In] the form used, the outer circle and the central area together look more like a button. The association with a dog bone, possible [in] the registered form, disappears. Overall, the distinctive character of the form used is produced by a graphic overall impression, of which the outer circle and the central area are equal, inseparable parts. It is precisely because both the registered form and the form used use the most basic and simple geometric forms that the overall impression is different.”

The Board therefore revoked Hyphen’s rights in full. Hyphen appealed to the General Court.

The General Court held that a finding that the distinctive character of the registered mark has been altered in use, called for an assessment of the distinctive or dominant character of the components added, on the basis of the intrinsic qualities of each of those components, as well as on the relative position of the different components within the arrangement of the trade mark. Contrary to the Board of Appeal’s views, the Cancellation Division had in fact adopted the correct approach (i.e. to consider the added component on the basis of its intrinsic quality and its position within the arrangement of the trade mark). The General Court also criticised the Board of Appeal’s decision by saying that its analysis departed from the Court of Justice’s case law (and in particular the finding in Specsavers International Healthcare and Others, C 252/12) according to which the distinctive character of a mark is to be determined by reference to whether the sign is indicative of goods or services originating from a particular undertaking, and thus acting to distinguish that product from those of other undertakings.

Turning to the actual nature of the variations made by Hyphen, the General Court accepted that that, the weaker the distinctive character of the mark, the easier it would be to alter it by adding a component that was itself distinctive, and the more the mark would lose its ability to be perceived as an indication of the origin of the goods. However, in the present case, the mere addition of a component so lacking in distinctive character as a circle, in both sign 1 and sign 2, was not sufficient to alter the mark – otherwise, it would be virtually impossible for proprietors of trade marks, consisting of a single figurative element, to adapt the registered mark to changing tastes in order to modernise it.

The Court found the use of the sky blue colour in sign no. 2 is not particularly original – it is not distinctive or dominant and does not have the effect of altering the mark as registered. In sign no. 3, the mere addition of the word element ‘hyphen c’ did not alter the distinctive character of the registered mark.

The Court therefore annulled the Board of Appeal’s decision – the signs used showed differences in the form for which the mark had been registered but those differences did not alter the distinctive character of the registered mark.

This is clearly a case on which reasonable minds may differ. It might be said that the ellipse was a “banal decorative component” but it is equally the case that the inclusion of the elliptical element seeks to change the emphasis of the viewer. However, whilst practitioners will no doubt debate the level of distinctiveness of the mark and the effect of the variation on the notional consumer, what is clear is that the ratio in Specsavers as regards the test of variation between marks as registered and marks as used, continues to be respected.

T – 146/15