September 2019. In trademark disputes, one of the parties generally claims that the counterparty has forfeited its right to the trademark in question because it has failed to use it in the previous five years. And if the trademark owner can’t show proof of use, he does indeed lose those rights.
Use in a different form
Occasionally, though, a trademark owner can demonstrate use, but in a form that’s slightly different from what was registered. The question that must then be asked is: does this divergent use still allow the rights to the trademark to be upheld?
This was precisely the issue at stake in the dispute between German company Mobile.de and the Bulgarian firm Rezon. Rezon owns a device mark in black and white containing the word Mobile, with which it tried to halt the European registration of the Mobile.ro by Mobile.de.
Rezon’s registered Mobile device mark
During the proceedings, Mobile.de claimed that Rezon’s trademark rights had lapsed due to its non-use of the Mobile device mark. Rezon countered by producing evidence of its use of the mark, except that the device was in blue with the suffix .bg. Is use of a blue logo with the suffix .bg enough to maintain Rezon’s entitlement to the black-and-white Mobile logo? After all, it could be seen as a different trademark.
Left: the device mark as used by Rezon; right: the device mark as registered
European law: relevant use
On 12 July 2019, the European General Court nevertheless ruled that use of the blue logo with a .bg suffix was sufficient to uphold Rezon’s rights to the black-and-white Mobile device mark. It concluded that use of a logo in a slightly different form can be accepted, provided the differences do alter the distinctive character of the trademark. According to the Court, the colour blue, blue dot and addition of the .bg suffix were negligible differences, merely a limited variation of the style of the existing device mark. So Rexon’s rights were upheld and the registration of Mobile.ro was thrown out.
Despite this ruling, we slightly struggle with the Court’s view that the addition of the colour blue, blue dot and .bg suffix can be dismissed as ‘negligible differences’, given that the word Mobile itself has absolutely no distinctive capacity. Surely all these changes give the device mark a completely different appearance?