JUDGMENT OF THE GENERAL COURT (Second Chamber)
24 September 2025 (*)
( EU trade mark – Revocation proceedings – International registration designating the European Union – Figurative mark representing two inverted chevrons – Action for annulment – Time limits for instituting proceedings – Admissibility – Genuine use of the mark – Article 18(1)(a) and Article 58(1)(a) of Regulation (EU) 2017/1001 – Nature of use of the mark – Form differing in elements that do not alter the distinctive character of the mark – Obligation to state reasons – Article 94(1) of Regulation 2017/1001 )
In Case T‑340/23,
Barry’s Bootcamp Holdings LLC, established in Miami, Florida (United States), represented by M. Hawkins, T. Dolde and C. Zimmer, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by R. Raponi, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Hummel Holding A/S, established in Aarhus (Denmark), represented by S. Pedersen, lawyer,
THE GENERAL COURT (Second Chamber),
composed, at the time of the deliberations, of A. Marcoulli, President, J. Schwarcz (Rapporteur) and L. Spangsberg Grønfeldt, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
having regard to the order of 11 January 2024, by which it reserved its decision on the plea of inadmissibility raised by Hummel Holding A/S until it rules on the substance of the case,
further to the hearing on 9 January 2025,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Barry’s Bootcamp Holdings LLC, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 March 2023 (Case R 1422/2022‑2) (‘the contested decision’).
Background to the dispute
2 On 13 May 2019, the applicant lodged an application with EUIPO requesting that the intervener, Hummel Holding A/S, have its rights revoked in respect of the international registration of 13 December 2006 designating the European Union for the following figurative sign:
3 The goods and services covered by that international registration in respect of which revocation is requested concerned the areas of hygiene, leather goods, clothing and games. More specifically, they are in Classes 3, 18, 25, 28 and 35 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.
4 The ground relied on in the application for revocation is Article 58(1)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), namely lack of genuine use.
5 On 1 June 2022, the Cancellation Division declared a revocation in part, with registration being maintained for the following goods (‘the goods at issue’):
– Class 18: ‘Bags, namely bags for sport’;
– Class 25: ‘Clothing, footwear, headgear namely sports clothing, footwear and headgear, leisure clothing, footwear and headgear and fashion clothing, footwear and headgear; sports clothing, footwear and headgear; leisure clothing, footwear and headgear; fashion clothing, footwear and headgear’;
– Class 28: ‘Balls for sports and games’.
6 On 1 August 2022, the applicant lodged an appeal before EUIPO against the decision of the Cancellation Division, on the grounds that the latter had dismissed the application for revocation and thus maintained the contested international registration in respect of the goods at issue.
7 By the contested decision, the Second Board of Appeal of EUIPO dismissed the appeal.
8 After noting that the contested international registration was purely figurative and that it consisted of two black chevrons pointing downwards, depicted on a white background and characterised by 90-degree angles, an identical space between the two chevrons, and flat vertical sides, the Board of Appeal found, in the first place, that it was necessary to analyse the three variants of that registration that were contained in the evidence of use submitted by the intervener. The Board of Appeal noted that, in accordance with Article 18(1)(a) of Regulation 2017/1001, two of those variants were forms that differed in terms of elements that did not alter the distinctive character of the contested international registration in the form in which it had been registered and that it was therefore necessary to take them into account for the purpose of assessing the genuine use of that international registration.
9 In the second place, pursuant to the combined provisions of Article 10(3) and Article 19(1) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), the Board of Appeal verified that the evidence provided by the intervener established the place, time, extent and nature of use of the contested international registration in respect of the goods at issue. It found that genuine use had been demonstrated for those goods and that the applicant’s appeal should be dismissed.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs.
11 EUIPO contends that the Court should:
– dismiss the appeal;
– order the applicant to pay the costs in the event that a hearing is convened.
12 The intervener contends that the Court should:
– dismiss the appeal as inadmissible and, in any event, unfounded;
– order the applicant to pay the costs incurred before the Board of Appeal.
Law
13 The applicant puts forward two pleas in law. It alleges, in the first, infringement of Article 94(1) of Regulation 2017/1001 and, in the second, infringement of Article 58(1)(a) thereof.
14 Before examining the pleas in law put forward by the applicant, it is necessary to rule on the plea of inadmissibility raised by the intervener, the examination of which was reserved for the examination of the substance of the case by order of the Court of 11 January 2024, adopted pursuant to Article 130(7) of the Rules of Procedure of the General Court.
Admissibility of the action
15 The intervener argues that the action before the Court is inadmissible, on the grounds that it was not lodged within the applicable time limit. More specifically, it argues that, first, the applicant did not bring the action within the time limit laid down in Article 72(5) of Regulation 2017/1001 and, secondly, the grant of an additional single period of 10 days, provided for by Article 60 of the Rules of Procedure, is not applicable to the time limits prescribed under Regulation 2017/1001.
16 The applicant contends that the plea of inadmissibility raised by the intervener is inadmissible and, in any event, unfounded. EUIPO has not submitted any observations on the admissibility of the action.
17 It must be stated that, in accordance with Article 72(5) of Regulation 2017/1001, an action against a decision of a Board of Appeal of EUIPO must be brought before the Court within two months of the date of notification of that decision. Furthermore, it is apparent from Article 60 of the Rules of Procedure that the procedural time limits for bringing actions before the Court are to be extended on account of distance by a single period of 10 days.
18 The single extension on account of distance of 10 days provided for by Article 60 of the Rules of Procedure applies to all the procedural time limits laid down by the Treaties, the Statute of the Court of Justice of the European Union and the Rules of Procedure (see judgment of 1 December 2021, Inditex v EUIPO – Ffauf Italia (ZARA), T‑467/20, not published, EU:T:2021:842, paragraph 33 and the case-law cited).
19 In the present case, the contested decision was placed on 5 April 2023 in the inbox of the applicant’s legal representative on EUIPO’s secure electronic communication platform (see Annex A.4 to the application).
20 According to Article 4(5) of Decision No EX‑20‑9 of the Executive Director of EUIPO of 3 November 2020 on communication by electronic means, applicable ratione temporis in the present case, ‘notification will be deemed to have taken place on the fifth calendar day following the date on which [EUIPO] placed the document in the user’s inbox’. Consequently, in the present case, notification of the contested decision is deemed to have taken place on 10 April 2023.
21 In accordance with Article 72(5) of Regulation 2017/1001, the applicant could bring an action within two months of the date of notification of the decision, to which was added the extension on account of distance provided for in Article 60 of the Rules of Procedure.
22 Therefore, the time limit for bringing an action before the Court expired at 00:00 on 21 June 2023.
23 Since the action was brought on 20 June 2023, it is not out of time and, without there being any need to rule on the admissibility of the intervener’s plea, that plea must be dismissed as unfounded.
The first plea, alleging infringement of Article 94(1) of Regulation 2017/1001
24 By its first plea, the applicant submits that it is impossible to ascertain, from the contested decision, the grounds on which the Board of Appeal found that the proof submitted by the intervener was sufficient to establish genuine use of the contested international registration in respect of the goods at issue. That failure to state reasons relates, on the one hand, to the use of the contested international registration as a trade mark and, on the other, to the identification of the goods and evidence of use.
25 First, the applicant submits that the contested decision does not contain any response to its argument that the Board of Appeal should not consider the decorative use of the contested international registration on clothing and footwear items, since such use resembles that of a position mark, for which registration had been previously refused. According to the applicant, the Board of Appeal did not explain why that decorative use, which is therefore devoid of any distinctive character, could constitute use as a trade mark.
26 EUIPO and the intervener dispute the applicant’s arguments.
27 According to Article 94(1) of Regulation 2017/1001, decisions of EUIPO are to state the reasons on which they are based.
28 The duty to state reasons thus enshrined has the same scope as that deriving from Article 296 TFEU. It is settled case-law that the statement of reasons required by Article 296 TFEU must set out clearly and unequivocally the reasoning of the author of the act, in order to enable interested parties to know the purported justification for the measure taken and to enable the EU judicature to exercise its power of review (see judgments of 11 December 2014, CEDC International v OHIM – Underberg (Shape of a blade of grass in a bottle), T‑235/12, EU:T:2014:1058, paragraph 42 and the case-law cited, and of 7 July 2021, Ardagh Metal Beverage Holdings v EUIPO (Combination of sounds on opening a can of soft drink), T‑668/19, EU:T:2021:420, paragraph 63 and the case-law cited).
29 The Board of Appeal is not obliged to express a view on every argument submitted by the parties. It is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision (see judgment of 29 November 2016, Chic Investments v EUIPO (eSMOKING WORLD), T‑617/15, not published, EU:T:2016:679, paragraph 102 and the case-law cited).
30 Furthermore, having regard to the continuity, in terms of their functions, between the Cancellation Division and the Board of Appeal, the statement of reasons for the decision of the Cancellation Division forms part of the context in which the contested decision was adopted, which is known to the applicant and enables the EU judicature to carry out fully its judicial review (see, to that effect and by analogy, judgments of 22 September 2016, Sun Cali v EUIPO – Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 46, and of 30 June 2021, Wolf Oil v EUIPO – Rolf Lubricants (ROLF), T‑531/20, not published, EU:T:2021:406, paragraph 79 and the case-law cited).
31 Finally, the review of compliance with the obligation to state reasons for a decision subject to review by the EU judicature, which relates to an infringement of essential procedural requirements and to the question whether the decision discloses in a clear and unequivocal fashion the reasoning followed by the institution that adopted it, must be distinguished from the review of the merits of that decision, which relates to an infringement of the applicable rules of law (see, to that effect, judgment of 2 April 1998, Commission v Sytraval and Brink’s France, C‑367/95 P, EU:C:1998:154, paragraphs 63 and 67).
32 In the present case, the Board of Appeal found that the contested international registration had been consistently placed on the catalogues submitted by the intervener and that it had also been used on price tags of clothing articles and directly on headwear and sports socks. It inferred from that that the contested international registration had been used in accordance with its essential function as an indicator of origin.
33 Furthermore, as regards the decision of the Second Board of Appeal of 2 November 2017 in Case R 1232/2017‑2, relied on by the applicant, the Board of Appeal noted, in the contested decision, that that case was not relevant because it concerned a position mark, whereas, in the present case, it was a figurative mark composed of two identical chevrons.
34 Lastly, it should be noted, in accordance with the case-law cited in paragraph 30 above, that, in its decision, the Cancellation Division of EUIPO expressly rejected the applicant’s argument alleging decorative use of the contested international registration, finding that it was not necessarily the subject of such use. The Board of Appeal did not overturn the Cancellation Division’s decision in that regard.
35 It follows from those considerations set out in the contested decision that, as EUIPO maintains, the Board of Appeal examined the applicant’s argument alleging decorative use of the contested international registration, including the earlier decision in Case R 1232/2017‑2 relied on by the applicant in support of that argument.
36 The grounds relied on in the contested decision and set out in paragraphs 32 to 34 above for rejecting the applicant’s argument alleging decorative use of the contested international registration are, moreover, sufficient to enable the Court to review their merits and they put the applicant in a position to challenge their legality, which, moreover, is the subject of the second part of the second plea examined below.
37 Consequently, the first complaint of the first plea in law must be rejected.
38 Secondly, the applicant also complains that the Board of Appeal did not identify in detail the evidence and goods upon which it based the contested decision. In particular, it points out that no evidence was filed in relation to the time, territory and number of sales for goods featuring hangtags with two chevrons.
39 EUIPO and the intervener dispute the applicant’s arguments.
40 In the contested decision, the Board of Appeal, in paragraphs 33, 58, 63, 99 and 101, indicated precisely the goods and evidence on which it relied in order to find genuine use of the contested international registration, in particular as regards socks, T-shirts, gloves, shoes and sports bags.
41 Furthermore, if the applicant’s arguments alleging a lack of indication in the contested decision of the goods and evidence making it possible to establish genuine use of the contested international registration were to seek to challenge the insufficiency of the evidence on which the Board of Appeal based the contested decision and, therefore, the merits of that decision, such a complaint would have to be rejected as ineffective for the purpose of examining the first plea alleging infringement of the obligation to state reasons. The obligation to state reasons is an essential procedural requirement that must be distinguished from the question whether the reasoning is well founded, which is concerned with the substantive legality of the measure at issue (see judgment of 14 December 2022, SY v Commission, T‑312/21, EU:T:2022:814, paragraph 46 (not published) and the case-law cited).
42 In the light of all of the foregoing, it must be held that the reasons why the Board of Appeal concluded that the contested international registration, affixed to clothing goods, was used as a trade mark, together with the goods in respect of which it found that genuine use of the contested international registration had been established and the evidence on which it relied, are apparent to the requisite legal standard from the contested decision.
43 Consequently, the first plea in law must be rejected.
The second plea, alleging infringement of Article 58(1)(a) of Regulation 2017/1001
44 The second plea is, in essence, divided into three parts. Under the first part, the applicant complains that the Board of Appeal erred in its assessment of the hangtags that were submitted as evidence of use. By the second part, the applicant submits that the use of the contested international registration is purely decorative and is therefore not use as a trade mark. Lastly, by the third part, it submits that the Board of Appeal should have refused to take into consideration the forms of the contested international registration that altered its distinctive character.
The first part of the second plea, relating to the hangtags submitted as evidence of genuine use of the contested international registration
45 By the first part of the second plea, the applicant submits that, in its assessment of genuine use of the contested international registration, the Board of Appeal erred in taking into account the hangtags to which that international registration was affixed, even though, according to the applicant, that evidence did not provide any indications as to the nature, place, time and extent of use.
46 EUIPO and the intervener dispute the applicant’s arguments.
47 Article 58(1)(a) of Regulation 2017/1001 provides that the rights of the proprietor of an EU trade mark are to be declared to be revoked on application to EUIPO or on the basis of a counterclaim in infringement proceedings if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
48 Article 10(3) of Delegated Regulation 2018/625, applicable to revocation proceedings pursuant to Article 19(1) thereof, provides, inter alia, that evidence of use of a trade mark must relate to the place, time, extent and nature of use of the trade mark.
49 It is clear from the case-law that there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods and services for which it is registered, in order to create or preserve an outlet for those goods and services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (see judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 39 and the case-law cited; see also, to that effect, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 36).
50 As is also clear from the case-law, in the context of assessing proof of genuine use of a trade mark, Article 10 of Delegated Regulation 2018/625 does not state that each piece of evidence must necessarily give information about all four elements to which proof of genuine use must relate, namely the place, time, nature and extent of use (judgment of 16 November 2011, Buffalo Milke Automotive Polishing Products v OHIM – Werner & Mertz (BUFFALO MILKE Automotive Polishing Products), T‑308/06, EU:T:2011:675, paragraph 61). The question whether a trade mark has been put to genuine use requires that an overall assessment be carried out, taking into account all the relevant factors. That assessment entails a degree of interdependence between the factors taken into account (see, to that effect, judgments of 8 July 2004, MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 36, and 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42). Thus each piece of evidence is not to be analysed separately, but rather together, in order to determine the most likely and coherent meaning. In the course of such an analysis, it cannot be excluded that a body of evidence will enable proof of the facts to be established, even though each of those items of evidence, taken in isolation, would not be capable of proving those facts (see judgment of 16 June 2015, Polytetra v OHIM – EI du Pont de Nemours (POLYTETRAFLON), T‑660/11, EU:T:2015:387, paragraph 94 and the case-law cited).
51 It should be noted that, in accordance with the case-law referred to in paragraph 50 above, it was not necessary for the hangtags submitted as evidence to include information about all four elements to which proof of genuine use must relate, namely the place, time, nature and extent of use. Therefore, the Board of Appeal was entitled to take them into consideration, on the ground that they made it possible to establish that, as a result of the affixing of the contested international registration to those hangtags, which is moreover in its registered form, that sign was a mark used publicly and outwardly.
52 Accordingly, the first part of the second plea in law must be rejected as unfounded.
The second part of the second plea, alleging lack of use of the contested international registration as a trade mark
53 By the second part of the second plea, the applicant submits that the use of the contested international registration, in its registered form, is purely decorative and therefore devoid of distinctive character. In those circumstances, it cannot constitute use as a mark as a basis for establishing genuine use thereof. Moreover, certain decisions of the Boards of Appeal of EUIPO and the case-law of the Court preclude simple graphic elements such as the two black chevrons against a white background, which constitute the contested international registration, from being used as a trade mark on the goods at issue.
54 EUIPO and the intervener dispute the applicant’s arguments.
55 It must be held that the evidence produced by the intervener before EUIPO confirms that the contested international registration, in its registered form, was used, inter alia, in the intervener’s product catalogues.
56 As the Board of Appeal correctly found in paragraph 84 of the contested decision, although there is no proof of distribution of those catalogues, the evidence must be seen as a whole.
57 Assessed in conjunction with the invoices produced by the intervener, those catalogues establish that the use of the contested international registration, in its registered form, was outward with the aim of acquiring a commercial position on the relevant market for the goods at issue (see paragraphs 82 and 84 of the contested decision).
58 As explained in paragraphs 33, 76 and 85 of the contested decision, the catalogues produced by the intervener show articles of clothing bearing the contested international registration and to which correspond a unique model code and colour code that are also found in the invoices issued to customers of the intervener established in various Member States. Furthermore, since those codes are found in the invoices sent by the intervener to its customers, it is possible to identify the clothing models sold in the registered form of the contested international registration, as well as the corresponding volumes.
59 Consequently, in accordance with the case-law referred to in paragraph 49 above, the Board of Appeal was entitled to conclude that the contested international registration had been used in accordance with its essential function as an indicator of origin, and therefore as a trade mark.
60 Those findings cannot be called into question by the applicant’s arguments based on certain previous decisions of the Boards of Appeal of EUIPO and of the Court.
61 First, the applicant submits that the use of the contested international registration cannot be equated with use as a trade mark, because it is very similar to the use of certain position marks whose registration was rejected by decision of the Second Board of Appeal of 2 November 2017 (Case R 1232/2017‑2) and by decision of the Fifth Board of Appeal of 15 February 2019 (Case R 2604/2017‑5).
62 In that regard, it is apparent from Article 3(3)(d) of Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for implementing certain provisions of Regulation 2017/1001, and repealing Implementing Regulation (EU) 2017/1431 (OJ 2018 L 104, p. 37), that a position mark is characterised by the specific way in which it is placed or affixed on the goods and that it is to be represented by submitting a reproduction which appropriately identifies the position of the mark and its size or proportion with respect to the relevant goods.
63 In the present case, the contested international registration was registered as a figurative mark and not as a position mark, which the applicant, moreover, acknowledged at the hearing.
64 Furthermore, the representation of the contested international registration does not include the goods on which it is supposed to be affixed or, a fortiori, a precise identification of the position of the contested international registration and its size or proportion in relation to the goods concerned. Thus, the contested international registration does not have the characteristics of a position mark.
65 Consequently, the assessments made in the decision of the Second Board of Appeal of 2 November 2017 (Case R 1232/2017‑2) and in the decision of the Fifth Board of Appeal of 15 February 2019 (Case R 2604/2017‑5) cannot be applied to the present case.
66 Therefore, the applicant’s argument based, in essence, on an analogy between the contested international registration and the position marks at issue in those decisions of the Boards of Appeal of EUIPO must be rejected.
67 Secondly, the applicant relies on the judgment of 4 May 2022, Deichmann v EUIPO – Munich (Representation of two crossed stripes on the side of a shoe) (T‑117/21, not published, EU:T:2022:271), which confirmed that simple graphic elements on shoes are not perceived as trade marks and the approach of which is, in essence, applicable to the present case.
68 In paragraph 61 of the judgment of 4 May 2022, Representation of two crossed stripes on the side of a shoe (T‑117/21, not published, EU:T:2022:271), the Court held that to accept that every geometric shape, even the most simple, has distinctive character because it features on the side of a sports shoe would make it possible for some manufacturers to appropriate simple, and above all decorative, shapes, which must remain accessible to everyone.
69 However, the contested international registration is not a basic geometric figure and was not classified as a simple and banal shape by the Board of Appeal.
70 Therefore, contrary to what the applicant claims, the approach adopted by the judgment of 4 May 2022, Representation of two crossed stripes on the side of a shoe (T‑117/21, not published, EU:T:2022:271), cannot be applied to the present case.
71 In the light of all of the foregoing, the applicant has failed to establish that there was any error vitiating the Board of Appeal’s assessment that the contested international registration was used as a trade mark in respect of the goods at issue.
72 Accordingly, the second part of the second plea in law must be rejected.
The third part of the second plea, relating to the use of the contested international registration in forms other than that registered
73 By the third part of the second plea, the applicant submits that, as regards part of the evidence filed with the Board of Appeal, the contested international registration is not affixed to the goods in the form in which it was registered and that that evidence should not be considered for the purpose of proving that it had been put to genuine use. According to the applicant, variations consisting of colours other than those of the registered form of the contested international registration alter that mark to such a degree that they alter its distinctive character and that they cannot be taken into account without infringing Article 18(1)(a) of Regulation 2017/1001. The contested international registration is, at most, distinctive to a low degree, which means that even minor alterations constitute unacceptable variations of the registered form. In the present case, the change of the colours of the mark is sufficient to alter its distinctive character.
74 EUIPO and the intervener dispute the applicant’s arguments.
75 According to Article 18(1)(a) of Regulation 2017/1001, proof of genuine use of a trade mark also includes proof of its use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered.
76 The purpose of Article 18(1)(a) of Regulation 2017/1001, which avoids imposing strict conformity between the form of the trade mark as used and the form in which the mark was registered, is to allow its proprietor, in the commercial exploitation of the sign, to make variations which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in insignificant respects, and the two signs can therefore be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark which was registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (see judgments of 15 December 2015, LTJ Diffusion v OHIM – Arthur et Aston (ARTHUR & ASTON), T‑83/14, EU:T:2015:974, paragraph 18 and the case-law cited; of 8 June 2022, Muschaweck v EUIPO – Conze (UM), T‑293/21, EU:T:2022:345, paragraph 113 (not published) and the case-law cited; and of 16 November 2022, Epsilon Data Management v EUIPO – Epsilon Technologies (EPSILON TECHNOLOGIES), T‑512/21, not published, EU:T:2022:710, paragraph 23 and the case-law cited).
77 The finding of an alteration of the distinctive character of the registered mark requires an assessment of the distinctive and dominant character of the elements added, carried out on the basis of the intrinsic qualities of each of those elements, as well as of the relative position of the different elements within the arrangement of the trade mark (see judgments of 23 September 2020, CEDC International v EUIPO – Underberg (Shape of a blade of grass in a bottle), T‑796/16, EU:T:2020:439, paragraph 139 (not published) and the case-law cited, and of 8 June 2022, UM, T‑293/21, EU:T:2022:345, paragraph 114 (not published) and the case-law cited).
78 For the purposes of that finding, account must be taken of the inherent qualities and, in particular, the greater or lesser degree of distinctive character of the registered mark. The weaker the distinctive character, the easier it will be to alter it by adding a component that is itself distinctive, and the more the mark in question will lose its ability to be perceived as indicative of the origin of the product. The reverse is also true (see, to that effect, judgments of 13 September 2016, hyphen v EUIPO – Skylotec (Representation of a polygon), T‑146/15, EU:T:2016:469, paragraph 29 and the case-law cited, and of 23 September 2020, Shape of a blade of grass in a bottle, T‑796/16, EU:T:2020:439, paragraph 140).
79 Accordingly, the question whether a contested mark has been used in a form differing in elements that alter the distinctive character of that mark in the form in which it was registered calls for a two-stage analysis. It is necessary, first, to rule on the degree of distinctive character of that mark and then, secondly, to determine whether that distinctive character has been altered in the modified form of the mark (see, to that effect, judgments of 10 October 2017, Klement v EUIPO – Bullerjan (Form of an oven), T‑211/14 RENV, not published, EU:T:2017:715, paragraphs 37 and 38, and of 16 November 2022, EPSILON TECHNOLOGIES, T‑512/21, not published, EU:T:2022:710, paragraphs 24, 25 and 37).
– The degree of distinctiveness of the contested international registration
80 First, in paragraph 47 of the contested decision, the Board of Appeal noted that the contested international registration enjoyed a presumption of validity as a result of its registration and could not therefore be regarded as lacking distinctive character, which, moreover, the applicant has not disputed.
81 That assessment is in line with settled case-law according to which it is necessary to acknowledge a certain degree of distinctiveness of a registered trade mark and from which it follows that a registered trade mark cannot be regarded as generic, descriptive or devoid of any distinctive character, without calling into question its validity in revocation proceedings (see, to that effect, judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 43 and the case-law cited). Thus, in the present case, the contested international registration has at least a minimum degree of distinctiveness that cannot be called into question in the present revocation proceedings.
82 Secondly, in paragraph 53 of the contested decision, the Board of Appeal found that the degree of distinctiveness of the contested international registration was ‘somewhat below average’.
83 The applicant does not call into question the description of the contested international registration made by the Board of Appeal, from which it is apparent that that sign consists of a double-chevron device in black on a white background, with the chevrons pointing downward, and characterised by 90-degree angles, identical space between the two chevrons, and flat vertical sides. As has already been stated in paragraph 69 above, the contested international registration does not consist of a basic geometric figure. Consequently, the Board of Appeal did not make an error of assessment in finding that that registration had ‘somewhat below average’ inherent distinctiveness.
– The lack of alteration of the distinctive character of the contested international registration
84 It is apparent from paragraphs 27, 53, 54 and 61 of the contested decision that the elements conferring distinctive character on the contested international registration are the outline of the two chevrons, their equal thickness and width, the equal distance between them and the contrast between their colour and that of the background on which they appear. Furthermore, the Board of Appeal found that, in the evidence showing white chevrons against a black background or black chevrons against a coloured background, the distinctive characteristics of the contested international registration were not altered, since the colour variations are decorative in nature (see paragraphs 54, 55, 61 and 62 of the contested decision).
85 The applicant complains that the Board of Appeal, in essence, did not include the combination of colours resulting from the representation of black chevrons against a white background among the distinctive elements of the contested international registration and, therefore, made an error of assessment in finding that a change in those colours did not alter its distinctive character.
86 EUIPO and the intervener dispute the applicant’s arguments.
87 First, it is clear from the case-law that the combination of the colours black and white is banal, with the result that it cannot, on its own, confer on the international registration a characteristic likely to be perceived, by the relevant public, as an indication of the origin of the goods concerned (see, to that effect, judgments of 24 November 2005, GfK v OHIM – BUS (Online Bus), T‑135/04, EU:T:2005:419, paragraph 35, and of 5 October 2022, Philip Morris Products v EUIPO (Representation of black and white lines), T‑502/21, not published, EU:T:2022:611, paragraph 22).
88 Therefore, it must be held that the Board of Appeal did not make an error of assessment in not including the colour combination of the contested international registration among its distinctive elements.
89 Secondly, it must be observed, as the Board of Appeal did, that where evidence shows white chevrons against a black background, the main and distinctive characteristics of the chevrons represented in the contested international registration, namely their outline, the distance separating them, their thickness, their width and the contrast between the colours black and white, are maintained (see paragraphs 53 and 54 of the contested decision).
90 Furthermore, as regards the evidence showing black chevrons against a brightly coloured background, the Board of Appeal did not make an error of assessment in finding, in paragraph 61 of the contested decision, that the elements making up the contested international registration remained visible in the same arrangement and proportions and that the contrast between black chevrons against a lighter background was also maintained.
91 Thus, it follows from the foregoing considerations that the Board of Appeal did not make an error of assessment in taking into account the evidence concerning the use of two white chevrons against a black background or of two black chevrons against a brightly coloured background, since those uses do not alter the distinctive character of the contested international registration.
92 The judgment of 19 June 2019, adidas v EUIPO – Shoe Branding Europe (Representation of three parallel stripes) (T‑307/17, EU:T:2019:427), relied on by the applicant, does not call that finding into question. In that judgment, the Court held that the Board of Appeal had been correct to reject the evidence showing the sign concerned in a reversed colour scheme since that variation was not insignificant in relation to the registered form of that sign, which had very few characteristics, was extremely simple and lacked inherent distinctive character (judgment of 19 June 2019, Representation of three parallel stripes, T‑307/17, EU:T:2019:427, paragraphs 10, 71, 76 and 77).
93 On the contrary, the contested international registration is not extremely simple and has a degree of inherent distinctiveness that is ‘somewhat below average’ (see paragraphs 82 and 83 above). Therefore, a variation in the colour scheme of the contested international registration does not have the same impact as in the case that gave rise to the judgment of 19 June 2019, Representation of three parallel stripes (T‑307/17, EU:T:2019:427).
94 Since the third part of the second plea is unfounded, it must be rejected and, accordingly, the second plea in law must be rejected.
95 Since none of the pleas in law has been upheld, the action must be dismissed in its entirety.
Costs
96 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
97 Since the applicant has been unsuccessful and having regard to the hearing on 9 January 2025, it must be ordered to bear its own costs and to pay those incurred by EUIPO, in accordance with the form of order sought by EUIPO.
98 Since the intervener has not applied for the applicant to be ordered to pay the costs relating to the proceedings before the Court, it must be ordered to bear its own costs.
99 Lastly, as regards the intervener’s request that the applicant be ordered to pay the costs incurred before the Board of Appeal, suffice it to note that the present judgment dismisses the action brought against the contested decision and that, therefore, it is the operative part of that decision that continues to determine the costs in question (see, to that effect, judgment of 28 April 2021, Comercializadora Eloro v EUIPO – Zumex Group (JUMEX), T‑310/20, not published, EU:T:2021:227, paragraph 45).
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Barry’s Bootcamp Holdings LLC to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO);
3. Orders Hummel Holding A/S to bear its own costs.
Marcoulli | Schwarcz | Spangsberg Grønfeldt |
Delivered in open court in Luxembourg on 24 September 2025.
V. Di Bucci | | S. Papasavvas |