Any trademark that is not “in use” is vulnerable to cancellation actions on the grounds of non-use. Not only must a mark be in use in order for its owner to maintain rights in it (and registrations for it), that use must be faithful to the form in which the mark has been registered or that differs only to the extent that its distinctive character is not altered. In other words, the trademark’s essential characteristics must remain intact. In practice, there is some tolerance allowing validation of use in a modified form in comparison to the registered sign, within the limit being that the overall modified sign can be considered equivalent to the registered one. This trademark theory is called “the law of authorized variation.”
Against that background, a question worth considering is whether an inversion of contrasts or colors of a registered trademark permitted or whether it constitutes a change to the essential characteristics of the mark? The Second Board of Appeal of the European IP Office (“EUIPO”) confirmed in a decision on March 10, 2023 that the use of a logo representing two white chevrons on a black background (below, right) constituted valid trademark use of the registered figurative mark, composed of two black chevrons on a white background (below, left).
Barry’s Bootcamp v. Hummel Holding
The Board’s decision came in a matter that centered on Hummel Holding A/S – the holder of international registration No 915962, designating the EU for the above-mentioned figurative mark, which it had registered in 2006 for various goods and services in classes 3, 18, 25, 28 and 35 – and Barry’s Bootcamp Holdings, which filed an EUIPO request for revocation of Hummel’s mark on the grounds of non-use for all the designated goods and services.
The EUIPO’s Cancellation Division rejected the request for revocation in part, considering that Danish sportswear company Hummel had clearly demonstrated trademark use. This evidence, which was numerous, included representations of the mark on a white background (as registered) and on a black background (different use of the registration), as pictured below. Barry’s Bootcamp appealed this decision, arguing that a large amount of the evidence featured the representation of the mark in an inverted form (white on a black background). Given the low degree of distinctiveness of the sign, the cult fitness chain argued that this difference in exploitation was likely to alter the distinctive character of the registered mark and, therefore, render it invalid.
In particular, Barry’s Bootcamp invoked a 2019 decision from the EU General Court, which held that adidas’s use of three-stripe trademark (registered in black on a white background, pictured left) in an inverted color form (pictured right) was a significant variation, likely to alter its distinctive character. In the adidas case, the mark in question was described as “extremely simple,” in that the sign had relatively “few characteristics,” consisting of three parallel black lines in a rectangular configuration on a white background. “Given the extreme simplicity of the mark at issue, even a slight variation could produce a significant alteration to the characteristics of the trademark as registered,” the court held. It should be noted that the adidas judgement considered causes of absolute invalidity and distinctive character acquired through use; it also refers to significant variations of the mark as used from the mark as registered.
In Barry’s Bootcamp v Hummel Holding, the Board adopted a different solution, noting that the mark in question: (1) has sui generis distinctive character at the time of registration; and (2) is not “extremely simple” in that chevrons are not basic geometric shapes and can be represented in multiple ways. At the same time, the Board specified why the color inversion does not alter the distinctive character of the mark, finding that the exploited sign, in fact, retains its shape, contour and proportions. The variation of the mark as used is, therefore, largely equivalent to the registered mark.
In its decision in the adidas case, the General Court also cited the Common Communication on the Common Practice of the Scope of Protection of Black and White Marks from April 2014, which specifies that a single change of color does not alter the distinctive character of a black and white trademark provided that: the verbal and figurative elements coincide and constitute the main distinctive elements of the brand; the contrast of colors is respected; the color or color combination does not have any distinctive character in itself; and color is not one of the main elements contributing to the overall distinctiveness of the brand.
In this case, all the criteria are respected; in particular, respect for the contrast which allows the public to clearly recognize the mark, making it possible to conclude that the proof of use of the sign with the colors inverted constitutes valid proof of use of the registered black and white trademark.
Supporting Case Law
The Board notably relied on a number of previous decisions, in which the use of signs in a form that differed from the registration was considered not to alter the distinctive character of the registered mark: Bionic’s registered X trademark (top left) and use in modified forms (top center/right) (Judgement of the EU General Court from October 2019), and BERGIN Werkzeugmärkte GmbH’s registered arrow trademark (bottom left) and use in modified form (bottom right) (EUIPO Board of Appeal judgement dated September 2019) …
The Board also made reference to a November 2020 decision involving the Hummel, in which the Boards of Appeal admitted the admissibility of evidence – and therefore, of use – representing a figurative element in the form of a chevron, in all kinds of colors (example pictured left), differing from those of the registered trademarks in black (pictured right).
THE BOTTOM LINE: We can take away from this decision a new and useful illustration of the applicable case law regarding trademark use in a form different from its registration. A certain tolerance is granted to trademark holders, allowing them to adapt the use of their registered trademark to the marketing and promotion requirements of the products or services concerned, but the fact remains that the sign must retain its DNA and that these variations must not alter its distinctive character.
Marianne Tissot is a French and European Trademark Attorney based in Novagraaf’s Paris office.
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