Facts
An entrepreneur and producer of various "Mallorca artists" had already filed the EU trademark application “MALLE” with the EUIPO in 2002 for various goods and services in classes 9, 35, 38 and 41. In 2004, the trademark was registered and granted protection for CDs, TV shows, parties, music production and the like. In the following years, the owner of the trademark took action by more than 100 preliminary injunction proceedings against third parties allegedly infringing the MALLE trademark due to the lack of a license. Two recipients of the cease-and-desist letters, however, defended themselves and filed an application for cancellation of the trademark with the EUIPO - successfully!
In May 2020, the Cancellation Division of the EUIPO had declared the trademark "MALLE" invalid on the basis of its descriptive character. According to the EUIPO, the term was already known, at least to the German public, as a synonym for the Balearic island of Mallorca at the time of the application. Accordingly, this term was to be understood merely as an geographical reference and could not enjoy trademark protection (see our article on the decision). This opinion was confirmed by the Board of Appeal in December 2020. The Board of Appeal based its decision on the fact that the contested trademark was, on the one hand, descriptive for the goods and services applied for (Art. 7 (1) (c) EUTMR) and, on the other hand, lacked any distinctive character (Art. 7 (1) (b) EUTMR).
In its action before the GC, the plaintiff sought the annulment of the decision of the Board of Appeal. In support of its claim, it argued that the contested decision was erroneous because "Malle" was not a geographical reference, but an invented term.
Decision
In its decision, the GC reiterates that the Board of Appeal declared the trademark invalid both on the basis of Article 7(1)(c) EUTMR and Article 7(1)(b) EUTMR. However, the plaintiff only challenged the first ground for invalidity by its action but not the second one. As a consequence, the contested decision could not have been annulled even if the plea asserted by the plaintiff had been well-founded. If the relevant part of a decision was based on several pillars, each of which by itself supported the decision, the decision could only be annulled if each of those pillars had been based on an error of law. Thus, an action directed against only one of the pillars of reasoning goes into the void. In particular, the absolute grounds for refusal listed in Article 7(1) EUTMR must be examined independently and separately from each other. Therefore, the mere fact that one of those absolute grounds for refusal does not apply to a trademark does not preclude the trademark from being rejected based on another absolute ground for refusal.
Conclusion
The EU trademark "MALLE" remains cancelled. However, the plaintiff is still the owner of two German word/device "MALLE"- trademarks, which are registered for sound carriers, TV broadcasting, radio programs and advertising as well as various goods in classes 25, 32 and 33. Advertising companies should therefore continue to be cautious regarding the use of the term "MALLE" - especially in connection with the goods and services that are still protected, regardless of the GC`s decision.
Authored by Yvonne Draheim and Hendrik Schulze
