Hermès International, known for its luxury goods, sought to protect its figurative trademark through an International Registration designating the EU. This trademark covers a range of items in Class 25, including clothing, footwear, and accessories. The application was made on September 8, 2016, but the situation turned into a legal tug-of-war when Markus Bennemann filed for revocation on June 13, 2022, arguing that Hermès had failed to provide adequate evidence of “genuine use” as required by Article 58(1)(a) of the EU Trademark Regulation (EUTMR), during the five-year period preceding the cancellation request.

Legal Requirements for Genuine Use

The central legal issue in this case revolves around the concept of genuine use as stipulated by Article 58(1)(a) of the EUTMR. Genuine use is fundamental for maintaining trademark rights and requires a trademark to be actively employed in the market in such a manner that it distinguishes the specific goods or services associated with that mark. This function is critical as without genuine use, a trademark can risk becoming vulnerable to cancellation.

To satisfy the genuine use requirement, the mark must not only be present but must also serve its primary role: guaranteeing the identity of origin for the products it represents. In essence, the trademark must create or maintain a market for the goods or services in question, assuring consumers that they can identify the source of the products through the trademark. This requirement aims to prevent companies from hoarding trademarks without actively using them, thereby ensuring that trademarks retain their value and significance in the market.

Hermes’ Burden of Proof

In this context, Hermès had the burden of proof regarding its genuine use of the contested trademark for the period from June 13, 2017, until June 12, 2022. They submitted various forms of evidence to support their claims, including product screenshots, invoices, and press articles. However, the Cancellation Division determined that much of the evidence fell short of demonstrating genuine use across the entire range of registered goods.

The Division noted that while there was some evidence of the mark’s use on shoes and t-shirts, Hermès failed to provide convincing proof for many other items, such as boots and fashion accessories. This lack of comprehensive evidence prompted concerns regarding the trademark’s continued relevance in the market, as the trademark appeared to function more as a design element rather than a distinctive identifier of origin. Consequently, the Division raised the critical point that if a trademark cannot effectively indicate the source of goods to consumers and if it simply blends into the product’s appearance then it cannot be deemed to have been genuinely used.

Cancellation Division’s Findings on Trademark Usage

On November 28, 2023, the Cancellation Division sided with Bennemann, finding that Hermès could not sufficiently prove its genuine use of the contested mark from June 13, 2017, until June 12, 2022. They reviewed various pieces of evidence, including product screenshots, invoices, and press articles, but concluded that the submitted materials did not adequately demonstrate the mark’s usage across the entire spectrum of registered goods. Specifically, while some items, like shoes and t-shirts, showed potential use, many items, such as boots and various accessories, lacked any proof. The Division pointed out that the trademark, especially on shoes, often appeared as mere design features rather than as identifiers of origin thus leading to the sobering thought that Hermès might be losing its “H” in the trademark game.

Hermès‘ Strategy and Arguments in Appeal

Hermès appealed the decision, insisting that the luxurious nature of their products captures greater consumer attention. As such the luxury brand argued that their stylized “H” symbol has long been associated with their prestigious items, particularly their iconic sandals. Market surveys indicated that consumers strongly associate the “H” with the brand. However, Bennemann countered that the use of the “H” in its application was altered to the point where it no longer functioned as a recognizable trademark. They argued that Hermès failed to demonstrate genuine use, which is essential for maintaining trademark rights.

Board of Appeal’s Consideration and Verdict

On September 6, 2024, the Board of Appeal delivered a mixed verdict. They upheld certain aspects of the Cancellation Division’s decision, confirming that Hermès did not adequately prove genuine use for many items in Class 25, but they annulled the revocation concerning shoes, t-shirts, sweatshirts, and rings for scarves. The Board reasoned that while the mark saw some usage, it often failed to perform its primary function of indicating the origin of goods. They stressed that without a trademark that consumers can easily recognize, brands risk losing their footing in the market, akin to having a shoe that just doesn’t fit.

Significance and Future Implications of the Ruling

This ruling underlines the importance of demonstrating genuine use in protecting trademarks, especially in the competitive luxury sector. The precedents set forth from this case convey that brands must ensure that their trademarks remain not only in use but also effective as identifiers of their products. Ultimately, as this case illustrates, if a brand is to keep its identity intact, it must tread carefully to avoid stepping into a “fashion faux pas.”

The case is now returned to the Cancellation Division for further review regarding the contested trademark.

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Sources:

Hermes’ sandal vamp presumed distinctive for assessment of genuine use