In the early 1980s, Yannick Noah was one of the best male tennis players in the world. The cool, charismatic Frenchman won one Grand Slam, the 1983 French Open, and he captained both the French Davis Cup team as well as the Billie Jean King Cup team. When Yannick's tennis playing days were over, he became a... wait for it, professional musician. Yes, some people really do get to spend their lives playing tennis and making music!
While racking up some considerable career achievements, as most sportsmen and musicians do, Yannick also got on top of his trade mark protection, which brings us to the case at hand – the cancellation of his registered trade mark in the European Union ("EU").
The cancellation proceedings
Registered Trade Mark Evidence of Use of Trade Mark
In 2008, Yannick Noah registered an EU trade mark, comprising the name Noah and a device, (see the first of the two marks above), covering leather goods, clothing, games and playthings. In 2019, a US clothing company called Noah Clothing LLC applied to cancel this registration on the basis of no genuine use of the trade mark for a period of five years or longer.
After considering the evidence provided by Yannick, the EUIPO's Board of Appeal did cancel the trade mark for all the goods covered by the registration, except 'polo shirts' and 'sweaters', for which there was proof of use. Noah Clothing then took this matter on appeal to the EU General Court ("the Court"), arguing that the registration should be cancelled for polo shirts and sweaters as well.
They relied primarily on two grounds, namely:
The late filing of evidence
Noah Clothing alleged that Yannick Noah had been allowed to adduce further evidence after the deadline had passed. But the Court rejected this, stating that the EUIPO has the discretion to disregard facts or evidence that was filed late. In this case, the evidence that had been filed late was 'complementary' to the first set of evidence, and was not new or further evidence. The Court also made the point that Noah Clothing had been given the opportunity to comment on the late-filed evidence.
Lack of genuine use
Noah Clothing's non-use claim related to the fact that most of the pictures purporting to show the use of the registered mark in fact showed a slightly altered different mark, namely the mark with the name Y. Noah (see the second mark above).
The legislation provides that the use of a mark that differs only in elements that do not alter the distinctive character of the mark can be accepted to prove genuine use of the trade mark. So the issue was this - did the addition of the letter Y to the name Noah alter the distinctive character of the mark? The US company argued that the addition of the letter together with the full stop did indeed alter the distinctive character of the mark, because Y. NOAH clearly refers to an individual, whereas NOAH does not.
But the Court thought otherwise. The Court said that the upper-case letter 'Y' followed by a full stop before the word 'Noah' was merely a repetition of an element already present in the figurative element of the trade mark and that the use of marks comprising surnames is common in the clothing sector. NOAH could be seen in both marks as a surname that refers to a specific person (Mr Noah,) and the addition of the first letter of his name simply supports this.
The result
The upshot – the addition of the upper-case letter Y did not alter the distinctive character of the mark. The registration was not vulnerable to attack for non-use and was maintained in force for polo shirts and sweaters.
Takeaways
Living in the age of influencers, celebrities, sportsmen and ordinary individuals are increasingly recognising the value of protecting and cultivating their brands for commercial benefit. Whether it be Yannick Noah who was able to exploit his brand during retirement, long after his tennis career ended, or Beyoncé diversifying her interests beyond music to haircare products; it is important to ensure that trade marks are put to genuine use for the goods/services covered by the registration in order to maintain your rights (and avoid revocation claims) to fully derive the commercial benefit of your IP. And in case you have any doubt about these assertions, you only need to see the stir created by the recent launch of Tiger Woods' new brand, SUNDAY RED, or consider the trade mark portfolio of, or importance placed on copyright issues by, Taylor Swift as shining examples of celebrities taking their IP seriously!
This case reinforces the need for brand owners to file applications for their logo trade marks, particularly where a slightly updated version of the logo is used which differs from the version registered. In other words, file and use your trade marks to avoid your day in court.
Reviewed by Rowan Forster, an Executive in ENS' IP Department.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
