Tema Case: beware of using your trademark in a different form!

[19/05/2023]

In a judgment dated of 3 May 2023, the Court confirms the decision of the Fourth Board of Appeal of the EUIPO according to which the proof of genuine use of the earlier trademark, Tema was not established.

The “Chambre de commerce et d’industrie de Reims Épernay” (Chamber of Commerce and Industry, Reims Épernay, France) filed an opposition to the European designation of the international registration of the word mark TEHA, based on its earlier Tema mark reproduced below.

During the opposition proceeding, the opponent was invited to establish the genuine use of its mark and provided evidence relating to a different form of the mark, namely: the single word element ‘tema’, written in lower- or upper-case letters, as well as the following two figurative signs:

The Opposition Division considered that the genuine use of the mark was established and partially upheld the opposition; the owner of the Teha mark then lodged an appeal before the Board of Appeal of the EUIPO.

However, the Board of Appeal considered that the differences between the figurative signs as used and the earlier mark as registered alter the distinctive character of the earlier mark. According to the Board of Appeal, “the distinctive character of the earlier mark lay in the specific, very different and visually eye-catching stylisation of the letters ‘t’ and ‘e’ as opposed to ‘ma’ and in the contrasting combination of the colours blue and black...” and that "..due to the different fonts and the colour combination, the earlier mark was not dominated by the word element ‘tema’”.

This decision is then confirmed by the General Court of Luxemburg.

The EUTM regulation allows to use a trademark in a different form from its original registration, as long as the distinctive character is not altered, but this case shows that significant differences in the figurative elements may lead to a loss of rights, even if the verbal element remains the same. Outside the EU, the law varies greatly and some countries even require that use be strictly compliant to the registration.

If you are considering to change the visual identity of your trademark, please do not hesitate to consult our experts who will advise you on whether or not it is worthwhile to proceed with a new registration in order to avoid taking the risk of losing your trademark.