Intellectual Property Enterprise Court

IP-2024-000037 - [2025] EWHC 547 (IPEC)

Fecha: 11-Mar-2025

The relevance of categorisation

The relevance of categorisation

39.

There is a passage in Thom Browne on which Iceland placed particular reliance in the present case. It comes in the section of the judgment where the judge listed matters she understood to be common ground:

‘e. the wording in many of the adidas Marks to the effect that they are “[t]hree dimensional” marks adds nothing, but is a peculiar feature of the fact that there is no opportunity on the registration form for the proprietor of a mark to register it as a “position mark”. As the General Court observed in Case T-68/16 Deichmann v EUIPO at [12]: “The decisive factor for the scope of protection of the mark is not the categorisation of the sign in question as a figurative, three-dimensional or position sign, but the way in which the mark will be perceived by the relevant public in relation to the goods concerned”. In other words, there is ultimately no magic in the description of the mark;’

40.

Iceland submitted that this was a statement of law from which it follows that identification of a trade mark in a registration as three-dimensional, figurative, or anything else carries no weight. The categorisation of a mark depends on how the public will perceive it in use.

41.

This common position of the parties in Thom Browne is not easy to reconcile with the judgment of the Court of Appeal in Glaxo, see paragraphs [34] and [75] quoted and discussed above.

42.

Deichmann SE v EUIPO (T-68/16) EU:T:2018:7 is a judgment of the General Court. It concerned an appeal from the Fourth Board of Appeal of the EUIPO which had rejected an application for revocation of the mark in suit on the ground of non-use. It seems that there was no verbal description. This was the visual representation of the mark:

43.

It was a position mark. However, when the mark was applied for, neither the Implementing Regulation in force at the time, nor the application form, nor the subsequent certificate of registration, recognised position marks as a distinctive category of mark. The mark was applied for and registered as a figurative mark.

44.

Paragraph [12] of the judgment was in the section in which the General Court recited the decision of the Board of Appeal. There had been debate about whether, correctly interpreted, the mark was a figurative or a three-dimensional mark. The Board had said:

‘…this graphic representation which defin[ed] the mark, …whether the mark [was] a position mark or a figurative mark [was] irrelevant.’

45.

The General Court then paraphrased what the Board had gone on to say:

‘The decisive factor for the scope of protection of the mark is not the categorisation of the sign in question as a figurative, three-dimensional or position sign but the way in which the mark will be perceived by the relevant public in relation to the goods concerned.’

46.

The General Court agreed with the Board that it did not matter whether the mark was a position or a figurative mark. The case law recognised that position marks could be figurative marks. As to defining the protection sought:

‘[40] … it is sufficient to note that, in the present case, it may be inferred directly from the graphic representation of the mark at issue, and with sufficient precision, that the protection sought covered only a cross, consisting of two black intersecting lines, represented in solid lines.’

47.

The Court did not specifically endorse the paraphrased section of the Board’s decision quoted in paragraph 45 above or state any rule of law that invariably the scope of protection of a mark must only, or even primarily, be determined by the way in which the relevant public would perceive the mark.

48.

The decision of the Board of Appeal that the mark should not be revoked for non-use was upheld by the General Court.

49.

The judgment of the General Court was appealed to CJEU: Deichmann v EUIPO (C223/18 P) EU:C:2019:471. The reasoning of the General Court was approved and the appeal dismissed:

‘[40] As regards the substance of the ground of appeal, it should be stated, first of all, that on the relevant date in this case, the applicable law did not define “position marks”, so that the General Court was not required to find that the classification of the mark at issue as a figurative mark or a position mark was relevant.

…

[42] The General Court correctly recalled, in paragraph 33 of the judgment under appeal, that “position marks” are similar to the categories of figurative and three-dimensional marks as they related to the application of three-dimensional elements to the surface of a product and that when assessing the distinctiveness of a mark, the classification of a “position mark” as a figurative or three-dimensional mark or as a specific category of marks, is irrelevant (judgment of 15 June 2010, X Technology Swiss v OHIM (Orange colouring of the toe of a sock), T-547/08, EU:T:2010:235).

[43] Such a classification is also irrelevant in assessing, as in the present case, the genuine use of such a mark.’

50.

Although in Glaxo the Court of Appeal’s analysis took the categorisation of the mark as a colour per se mark to be a firm starting point, I do not believe that the Court of Appeal intended to formulate any rule of law about this. And the judgment of the CJEU in Hartwell implies that there is no such rule of law. However, often it will be the most useful starting point. Its advantage is that the categorisation chosen is an unambiguous statement about the protection sought for the mark, whereas the visual representation and verbal description, individually and/or taken together, may not be – as in Glaxo.

51.

Deichmann was unusual in that the categorisation which the proprietor intended was not available at the time of application, so the box ‘figurative mark’ was ticked faute de mieux. In those circumstances it could not be taken to be an unambiguous statement of the protection sought. There was no verbal description to qualify the visual representation, so the visual representation was the best guide to the protection sought.