The General Court of the European Union has recently ruled in Case T‑677/19, Polfarmex S.A v EUIPO.
This case concerns an EU trademark SYRENA registered in 2011 for the following goods:
- Class 9: ‘Computer and video game programs and software, none of the aforesaid goods relating to the aeronautical field, and in particular helicopters and rotorcrafts’;
- Class 12: ‘Motor vehicles for locomotion by land and parts therefor (included in Class 12)’;
- Class 28: ‘Games and playthings, model vehicles; scale model vehicles made of all materials, in particular paper model vehicles and die-cast model vehicles or plastic model vehicles’.
In 2016, Polfarmex filed an application for revocation of this mark based on lack of a genuine use for a period of 5 years.
The EUIPO revoked the mark for all goods with an exception of class 12 – cars.
Although there weren’t many invoices for sales of cars under this mark, the Office concluded that this is normal because the mark had been used only for sport cars. The market and demand of these cars is limited compare with the traditional vehicles. Due to this fact, advertisement and preparation related to the mark was deemed as sufficient. The decision was appealed.
According to the Court:
As is apparent from the case-law, it is common knowledge that the market for high-end sports cars with technical specifications that are not intended for normal, everyday road use and the price of which exceeds that of most private use cars is often characterised by relatively low demand, by production to specific order and by the sale of a limited number of vehicles. The Court held that, in such circumstances, the provision of accounting documents setting out sales figures or invoices is not necessary for the purposes of establishing genuine use of the mark in question. Further, the Court noted that publications demonstrated that the mark in question was the subject matter of public discussion in anticipation of a revival of production and sale of a car model bearing the mark in question.
It follows that, having regard to the specific features of the relevant market, duly taken into account by the Board of Appeal when it relied on the case-law cited in paragraph 70 above, the evidence produced by the intervener shows the existence of various preparatory tasks and advertising efforts in relation to the SYRENA Meluzyna R model. Moreover, it shows, as contended by EUIPO, not only that the car was about to be marketed, but also that it was available to order.
To the question to what extent sport cars can cover the whole cattegory of vehichles, however, the General Court disagreed with the EUIPO.
According to the Court:
Contrary to EUIPO’s claim, racing cars are capable of constituting a coherent subcategory, for, unlike cars, their purpose is not the same as that of vehicles intended to carry a driver and passengers. Those cars, as acknowledged by the Board of Appeal in paragraph 61 of the contested decision, are not intended to be driven on public roads and such use is even prohibited on account of the absence of type approval. Their purpose is therefore different from that of other cars.
It follows that, to the extent that genuine use of the mark has been established in relation to racing cars alone, which constitute an independent subcategory within the meaning of the case-law cited in paragraph 116 above, the Board of Appeal was wrong to find that genuine use had been shown in respect of cars in Class 12. On that basis, the second complaint of the third plea and the fourth plea must be upheld and the contested decision must be annulled to the extent that it upheld the registration of the contested mark in respect of ‘cars’ in Class 12, with the exception of ‘racing cars’, in respect of which registration must be upheld.