In a trademark cancellation action for non-use, an issue of high significance for the trademark owners may come into play: Is there a genuine use of a registered trademark that consists of both verbal and figurative elements, when the latter is omitted while used in trade?
In a recent case brought before the Athens Administrative Court of First Instance, the contested trademark consisted of the stylised word ‘JAGUAR’ and an image of the wild cat commonly known as a jaguar (Figure 1). It was argued accordingly that the owner of the contested trademark had failed to prove genuine use of the trademark, since all evidence submitted were related solely to the stylised word ‘JAGUAR’, while the figurative feature was missing (Figure 2).
The court held that the said omission does not alter the distinctive character of the trademark at issue. The court further clarified that the omitted figurative element conceptually illustrates the existing stylised word of the trademark. Thus, the word prevails, and the figurative element is a mere accessory.
The ruling is in line with EU case law, where it is correct to say that the average consumer will more easily refer to the goods in question by quoting their name rather than by referring to the figurative element of the trademark. Moreover, it would be unjust to impose a requirement for strict conformity between the form used in trade and the form in which the trademark was registered. In that sense, the trademark owner is reasonably allowed to make variations of its trademark in the course of trade, without altering the mark’s distinctive character, which further enables the mark to be better adapted to the marketing and promotion requirements.
In view of the above, there seems to be a preference to the verbal elements of a trademark, at least in cases where the figurative ones conceptually denote the verbal ones. It is nevertheless doubtful, whether the contested trademark would still survive the non-use attack, if the figurative element omitted was to serve a concept other than the one of the verbal feature.
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