Click here to view image.
Symaga is the proprietor of the above EU trade mark registration in Classes 7 and 21. PAL – Bullermann applied to revoke the registration on the grounds it had not been used in the EU for a continuous period of 5 years.
The Cancellation Division allow the application for revocation with the exception of certain goods in Class 7. PAL- Bulleman appealed. The First Board of Appeal dismissed this appeal and held that Symaga had used the mark not only in respect of the goods allowed by the Cancellation Division but also additional goods in Class 7. PAL - Bulleman appealed to the General Court.
The evidence submitted by Symaga consisted of over two hundred invoices for the years 2010 to 2012 all of which contained the following logo.
(“Logo 1”) Click here to view image.
It also submitted a 2012 price list which included the following logo.
(“Logo 2”) Click here to view image.
The final piece of evidence submitted was a 2012 product catalogue which contained Logo 2 together with the simple word element pal.
PAL - Bullermann argued that the Board of Appeal had incorrectly found that the trade mark owner had used the registered trade mark . It claimed the evidence was of marks in forms differing in elements which altered the distinctive character of the registered mark.
The General Court stated that the reason for allowing use in a form which does not alter the distinctive character of the registered trade mark is to permit a trade mark owner to make variations in a registered trade mark without altering its distinctive character to make it better adapted to the marketing and promotional requirements of the relevant goods or services.
The Court noted that no use had been submitted of the mark as registered. It agreed with the Board of Appeal that the figurative part of the registered trade mark was a frame to highlight the presence of the word pal and that the logo occupied a secondary position in the overall impression. It also agreed that the relevant public would see that the logo had a “purely decorative” element and would not have a trade mark function.
Turning to the evidence filed:-
The GC found use of Logo 1 in the invoices was use of the registered trade mark. They held that the orange and red circular elements and the words Industries The Center Of Evolution would be regarded as secondary elements, figurative additions that were “weakly distinctive and negligible” whereas the word PAL is at the middle of the mark and dominated it. They agreed with the Board of Appeal that the words Industries The Center Of Evolution were of a descriptive character and that the word PAL was the distinctive dominant element.
With regard to the price list, Logo 2 was considered to be “equivalent” to the registered trade mark given this logo was dominated by the word PAL in capitals accompanied by the secondary word INDUSTRIES.
With regard to the use of the word PAL, this was “almost identical” to the registered trade mark. The GC found that the omission of the logo element of the registered trade mark would not alter the distinctive character of that registration.
It therefore held that there had been use of the registered trade mark.
PAL - Bullermann also appealed against the Board of Appeal’s decision that evidence showed that the mark had been used. The GC dismissed the Applicant’s arguments and stated in particular the fact that the registered trade mark does not appear on invoices cannot mean that the invoices are irrelevant. The invoices referred to product reference codes and abbreviated descriptions which corresponded to the references contained in the price list and the 2012 catalogue. They also referred to various products distributed under the name pal. This was sufficient to show a link between the products and the registered trade mark. Further it found that all of the invoices for the three year period contained the registered trade mark and were addressed to companies in a number of EU countries.
The claim therefore the registered trade mark had not been used and should be revoked was rejected. Whilst it may have been expected that use of PAL and Logo 2 was found to be use of the registered trade mark, it is perhaps surprising that use of Logo 1 was deemed use of the registered trade mark as these two logos do appear different.