In a late 2014 decision, the Federal Administrative Court provided further guidance on how a trademark must be used (design-wise) in order to avoid losing the rights attached to it. The decision shows that it may be advisable not to change the letter type or font of the mark in a significant way if the mark was registered not as a mere word mark but in a certain typeface.
In the course of opposition proceedings against the registration of the word mark "PD&C" in class 25 based on the prior international word and figurative mark "P&C, fig." (belonging to the clothing company Peek & Cloppenburg), the defendant claimed non-use of the opponent's mark. Peek & Cloppenburg in turn submitted evidence to prove the use of their trademark. However, the defendant claimed that the opposing trademark has not been used in a manner that preserved the rights attached to it.
In order to preserve the rights attached to a trademark, a rights holder must have used the mark during the period of five years prior to a non-use claim (art. 12 (1) of the Trademark Act). As stated in art. 11(2) of the Act, the use in a form that does not differ significantly from the registered form shall also constitute a trademark use and therefore preserve the trademark rights.
Evidence showing the (potentially) preserving use of a trademark may take the form of documents (e.g., invoices, delivery notes) and inspection objects (sample labels, packaging, catalogues, brochures). All documents must refer to the relevant time period prior to the objection of non-use. In the case at hand, the submitted evidence often showed Peek and Cloppenburg's mark in a way that was different from the registration:
In the decision, the court discussed the way a trademark must be used in order not to lose the rights attached to it. The starting point is how a mark is registered. Deviations from the registration – be it by graphical redesign of the mark or by adding further elements – are considered as preserving the mark provided they are not significant. The court held that a deviation is insignificant if it only concerns some of the trademark's elements without affecting the mark's distinctiveness as such. It further noted that the more distinctive a trademark is, the greater the scope of the rights holder to adapt the mark's design, e.g., to change it according to market habits.
In the case at hand, dealing with the question whether the evidencing documents showed the opposing trademark in a form differing significantly from the registration or not, the court assessed the letter sequence "P&C" with a deviating typeface. The court held that, unlike the registered trademark, the differing representation of "P&C" as actually used was not based on a moderncurved font type but that such font type was exactly what was the characteristic feature for the opposing trademark, and thus contributed to its distinctiveness. According to the court, in its overall impression, the design as used did not bring to mind the registered trademark but rather appeared to be another sign. The court did not see any reason to attribute a high level of distinctiveness to the registered mark, such that it would have allowed the rights holder to deviate further from the registered form.
As such, the court considered the submitted evidencing documents showing "P&C" with a differing typeface not to be prima facie evidence of the trademark use. Given this, it is apparent that the scope of a rights holder to change a trademark's design (i.e., its typeface) is limited where the changed element is considered to contribute to the mark's distinctiveness.
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