In El Corte Ingles v Wolverine World Wide, Inc, the much beloved logo of Hush Puppies (hereinafter, hound) has survived a non-use attack in Europe in some key classes.
Although WWW was ultimately successful in partially defending the non-use action, the case is a reminder of the much higher burden faced in saving a Community Trade Mark registration from being removed for non-use, as compared to the position in Australia. It also underscores the importance of animal brands in the fashion market (speaking of which, our earlier note on the battle of the British bird brands can be seen here).
Background and decision
WWW filed for the hound (in the form shown below) as a CTM on April Fool’s Day, 1996 in respect of a broad range of goods and services.
El Corte filed a non-use application in March 2012 against the entire registration.
OHIM’s Cancellation Division upheld the removal action in respect of a number of classes of goods, but considered that WWW had made genuine use in respect of certain goods in classes 3, 14, 18, 21, 25 and 28.
El Corte appealed. It argued that:
(a) the mark as used was materially different from the mark registered, because it was accompanied by additional word elements;
(b) the mark was not used within the relevant period (2 March 2007 to 1 March 2012);
(c) the geographic extent of use was insufficient; and
(d) the evidence was deficient as regards the commercial volume, duration and frequency of use during the relevant period.
As regards (a), the 2nd Board recounted that use of a mark that does not alter the distinctive character of the mark as registered could be relied on by WWW. The decision include some examples of the use of the hound (or variations) including the following (there were also other examples of use, including those in which the mark was “in the shape of a live dog”!):
The 2nd Board considered that in most cases, and although the mark as used varied, the image of the hound “clearly dominates the marks” (eg. as the additional elements were of smaller size or were descriptive). The image of the hound had an “independent function”. The 2nd Board was comfortable that the mark (or a mark that did not alter the distinctive character of the mark as registered) had been used.
A global assessment of the evidence, including an affidavit from WWW’s Deputy General Counsel and sales figures, invoices, internet printouts and catalogues, led to the 2nd Board also rejecting El Corte’s arguments (b), (c) and (d).
The non-use action failed for the specified goods.
Readers comparing the reasoning against non-use decisions in Australia will immediately notice the quite significant lengths that WWW went to in terms of its evidence of use of the hound. Brand owners that have taken steps to protect their mark in Europe should be mindful of this in terms of ensuring that full details of use in Europe are accessible, factoring in the need to provide solid evidence of the place, time, extent and nature of use (in defending a non-use action, and if required to prove use in the context of an opposition or invalidity action against third parties [if applicable]).
The (likely very relieved) hound was unavailable for comment.
The decision can be seen here.