Use of a 3D mark for a potato chip in an altered form: what is needed to avoid revocation for non use?

During the past few years, non-conventional trade marks have found their way into trade mark registries worldwide and discussions over their protection has more or less turned mainstream. This blog has on several occasions reported on decisions related to non-conventional trade marks [see for instance and recently IPKat posts here, here and here].

Adding to the now abundant case law on such marks with a pinch of ‘genuine use’ this time’, readers will be happy to learn that, a few days ago, the General Court issued yet another interesting judgment (Case T‑553/21) (available only in French and German) concerning the question of whether the use of a shape of a smiley, registered as an EU trade mark (EUTM), altered the distinctive character of that mark.

In 2001, McCain GmbH (the Intervener) successfully registered the following three-dimensional sign as an EUTM

Registration was obtained for goods in Class 29 (pre-cooked potato croquettes and products based on mashed potatoes frozen) of the Nice Classification.

In 2018, Agrarfrost GmbH & Co. KG, Inc (the Applicant) submitted a request for revocation, pursuant to Article 58(1)(a) of Regulation 2017/1001 (EUTMR), on the ground that the contested mark had not been the subject of genuine use for an uninterrupted period of five years.

In 2020, the Cancellation Division dismissed the request for revocation and the Applicant appealed to the EUIPO Fifth Board of Appeal (the Board). In 2021, the Board dismissed the appeal and considered that, based on the evidence provided by the Intervener, the conditions related to the duration, place, and extent of use were met. As regards the examination of the elements related to the nature of the use of that mark, the Board considered that it had been used in accordance with its main function and in a form which did not differ by elements in altering the distinctive character of that under which it had been registered.

The Applicant subsequently appealed to the General Court.

The General Court’s judgment

(i) Use of the contested mark

According to the General Court, in order to conclude that the three-dimensional shape of a smiling face had in fact been used as a trade mark, it was necessary to examine whether the evidence produced by the Intervener made it possible to conclude that the trade mark was used in accordance with its essential function of indicating the commercial origin of the goods concerned during the relevant period.

In that regard, it considered that:

• the shape of a smiling face represented by the contested mark was visible on the packaging of the products;
• with regard to the packaging of products intended for catering professionals, it was clear that the three-dimensional shape constituting the contested mark was directly visible through transparent packaging;
• the advertising material could guarantee the identity of the origin of the goods for which the said mark had been registered; and
• it was apparent from the television advertisements broadcast in Germany, France, and Italy, that the shape of the product corresponding to the contested mark was clearly highlighted. It was also apparent from photographs taken from Facebook that that mark was used prominently.

Furthermore, as regards to the Applicant's argument that the shape of a smiling face represented by the contested mark did not differ significantly from the habits of the food sector, it is common knowledge that deep-frozen potato products, such as fries and croquettes, are generally designed in the form of sticks, pucks or wedge-shaped. Nonetheless, despite such common knowledge, it was apparent from the market study that was submitted by the Intervener that there were practically no products designed in an identical or similar manner by third parties during the relevant period.

(ii) Use of the contested mark in altered form

The General Court then moved on to examine whether the evidence produced by the Intervener showed that the contested mark appeared in a different from that in which it was registered. In this regard, it considered that:

• as regards to the colour of the contested mark, the packaging of the goods and the television campaigns depicted the shape of a face smiling in golden yellow. However, contrary to what the Applicant had claimed, the colour that was used could not be one of the main factors giving the mark its distinctive character; and
• in relation to the joint use of the mark with the word mark SMILES on the packaging of the goods, the General Court considered that the presence of the word mark SMILES appeared as an independent element and not as forming a unit with the contested mark. The addition of that word mark did not prevent the relevant public from perceiving the shape of the contested mark, which remained identical, as an indication of the origin of the goods concerned. Furthermore, even if that word mark was entirely visible on the packaging of the products, the shape of a smiling face constituting the contested mark remained clearly identifiable.

Considering all the above, it followed that the Applicant’s plea was unfounded and therefore rejected. The judgment makes an interesting reading also because of the examination of the evidence and notion of genuine use of a trade mark.