EU General Court rules over CRIADORES trade mark and on Genuine use of VAPIX trade mark

EU General Court rules over CRIADORES trade mark

On 8 May, in case T-314/23, the General Court of the European Union had to decide whether the sign 'CRIADORES' meets the requirements of distinctiveness and non-distinctive character laid down in the EUTMR for its registration as a trade mark in the European Union.

In January 2020, a Spanish-based company, Tiendanimal Comercio Electrónico de Artículos para Mascotas, filed an application with the European Union Intellectual Property Office (EUIPO) for registration of the figurative mark 'CRIADORES' as an EU trade mark (N. 018186334) covering, in particular, dietary and nutritional supplements for animals and foodstuffs and beverages for animals falling within Classes 5 and 31 of the Nice Classification.

Both the first instance examiner and the EUIPO Board of Appeal rejected the application on the basis of Article 7(1)(b) and (c) and Article 7(2) of the EUTMR. They considered that the mark applied for was descriptive of the quality of the goods to which it referred for the relevant public and that it lacked distinctiveness: the word “criadores” refers to a person who is in charge of, or whose job it is to breed horses, dogs, chickens, etc, therefore being directly connected to the actual goods and services for which the trade mark was sought. In this case, the relevant public was considered to be the Spanish public, since the word 'criadores' comes from the Spanish language: while the word has no meaning in other European languages (and would not be understood by non-Spanish speakers), it is enough that a sign be descriptive or non-distinctive for part of the EU population to be refused registration. The Spanish company appealed to the General Court of the European Union., which upheld the decision of the EUIPO to reject the registration of the mark "CRIADORES" on the grounds that it was indeed descriptive and lacked distinctiveness. 

The Court pointed out that the trade mark refers to people who breed animals, which is closely linked to the products covered by the mark, animal food and supplements. This direct relationship between the mark and the goods means that consumers would immediately perceive a description of the characteristics of the goods without any need for further reflection, meaning that the sign was indeed descriptive as understood under  Article 7(1)(c).The Court found that the combination of the verbal element 'criadores' and the graphic representation of a crown above the word did not alter the descriptive character of the mark in relation to the goods designated. 

EU trade mark dispute: Genuine use of VAPIX trade mark

On 8 May, the General Court of the European Union issues its decision on case T-207/23 regarding the possible revocation of the European trade mark VAPIX.

In April 2006, Axis AB applied to the EUIPO for registration of the EU word mark N. 005040118, VAPIX. The mark was registered for goods and services in Class 9 of the Nice Classification, including, among others, interfaces for cinematographic goods, apparatus and instruments for measurement, signalling and control. The trade mark was registered in February 2007 and renewed in April 2016.

However, in January 2020, Sta Grupa AS filed an application for revocation of the trade mark on the grounds that Axis AB had not  used the trade mark in the last  five years. The Cancellation Division of the EUIPO revoked the contested mark on the basis of a lack of evidence of genuine use of the VAPIX trade mark. Furthermore, there was no evidence that the goods covered by the mark were supplied or sold to customers as stand-alone goods and not as ancillary goods supplied under another Axis AB trade mark. The Board of Appeal of the EUIPO partially upheld the appeal and partially annulled the Cancellation Division's decision in respect of certain goods such as software interfaces (APIs) for which it considered that sufficient proof of genuine use had been provided.

Genuine use of a trade mark is addressed in Article 18 of Regulation (EU) 2017/1001, which states that for a trade mark to remain registered, it must be genuinely used in the European Union in connection with the goods and services for which it is registered. Use must start within five years from the date of registration and there must be no interruption in use for more than five consecutive years. In case the trade mark has not been put to “genuine use” for a period of five consecutive years, it can be revoked. Genuine use means actual and effective use on the market, and not merely symbolic or nominal use, in order to maintain the protection of the mark and prevent its revocation. If the trade mark owner has not made genuine use, it must justify the lack of use with valid reasons, such as commercial, logistical or legal obstacles which have made it impossible to use the trade mark.

The General Court of the European Union had to decide whether the use of the VAPIX mark was sufficient and genuine to maintain the registration of the mark.

The Court's decision was based on a detailed assessment of the evidence submitted by both parties, and held that genuine use of the VAPIX mark for the designated goods, such as video surveillance cameras and video encoders, had been proved. The evidence accepted by the Court to prove this included: the use of the mark as a sign in communications,  use of the VAPIX mark to identify the origin of the products and the software interface (API) that provided access to its term library. The commercial effort to actively use the mark was confirmed by the fact that there were approximately 3 000 users of the VAPIX API in the European Union (who would therefore know the API under said name); Lastly, data from Google Data Analytics proved the presence and use of the mark in seven EU Member States, showing regular access to the library during the relevant period and several thousand page views by interested parties.