The Board of Appeal of the EUIPO has ruled in the case related to the invalidation of the EU trademark SHAVETTE.
The mark was filed in 2014 by the German company DOVO Stahlwaren Bracht GmbH & Co.KG for the following classes:
- Class 8: Razors, electric or non-electric, and parts therefor; Containers and cases
- Class 21: Shaving brushes; Holders for razors and shaving brushes.
The production of SHAVETTE razors started in the 1980s by DOVO and since then they have gained serious popularity amongst consumers.
In 2018, another company Sinelco International, BV filed a request for a declaration of invalidity of the registered mark for all the above goods on the ground of Articles 59(1)(a) EUTMR in conjunction with Article 7(1)(c) and 7(1)(d) EUTMR:
The following shall not be registered:
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
According to Sinelco, the word SHAVETTE is used by consumers as a generic term describing an entire category of razors with exchangeable blades. Evidence was submitted that shows such use by consumers in Sweden and the United Kingdom.
The Cancelation division of the EUIPO invalidated the mark agreeing that it is a generic term.
The fact that a trademark is being used as the common name to refer to a specific product or service is an indication that it has lost its ability to differentiate the goods or services in question from those of other undertakings. One indication that a trademark has become customary is when it is commonly used verbally to refer to a particular type or characteristic of the goods or services. It has been demonstrated that the contested trademark has become a name used as a synonym for straight razors with exchangeable blades so extensively that, as established by the cancellation applicant, in 2014 the trademark was not capable of differentiating the goods or services in question from those of other undertakings.
The decision was appealed and the Board of Appeal annulled it. One of the reasons is that the appeal happened after Brexit and the grace period that ended on 31.12.2021. This means that all evidence related to the UK is no more admissible no matter when the invalidation proceeding was started.
This is due, on the one hand, to the fact that the invalidity applicant has no interest to act where an absolute ground
only applies in relation to the UK. On the other hand, the above constitutes an application by analogy of Article 59(2) EUTMR and Article 209(2) EUTMR, which states that ‘the registration of an EU trademark which was under application at the date of accession may not be refused on the basis of any of the absolute grounds for refusal listed in Article 7(1) if these grounds became applicable merely because of the accession of a new Member State’. Finally, this is also confirmed by Article 54(3), 2nd sub-para, Withdrawal Agreement (‘WA’) according to which an equivalent UK trademark (that is a UK mark derived from a ‘parent’ EUTM according to Article 54(1)(a) ‘WA’) is not to be invalidated where the absolute ground of invalidity does not apply in the UK.
According to the Board, the rest of the evidence related to Sweden is not enough in order to support the conclusion that SHAVETTE is a common and generic name for razors.
This case shows us how important is for every company to communicate correctly that their mark is a source of trade origin and not a name of the related products or services. If this is not part of the marketing strategy of the company, in some cases there are some chances consumers to start indicating the whole product category using the same name which exposes the mark to the risk to be invalidated at some point.