▷ EuG, December 15, 2021 – T -188/21: Cancellation of the Union trademark “MALLE”

04.02.2022 – 13:54

dr Metzner Lawyers


On December 15, 2021, Michael Metzner and his team won a case before the Court of Justice of the European Union, or EuG for short. In cooperation with Erlangen patent attorneys, the cancellation of the Union trademark “MALLE” was defended, and the court decided in a recent judgment that the Union trademark “MALLE” had grounds for cancellation.

Specialist lawyer Dr. Michael Metzner: “Our mandate, Ricardo Hoffmann, owner of the ‘Ludwig Bamberg’, is an organizer of “Malle” parties, i.e. celebrations that are thematically linked to Mallorca. He was warned by the Hilden entrepreneur Jörg Lück, who Registered the “MALLE” brand, our client countered and applied for the cancellation of the brand. Attorney and specialist in intellectual property law Maria Scheiner conducted the proceedings before the EuG and we were able to win it on December 15th, 2021.”

The history

On April 29, 2002, the plaintiff registered the sign “MALLE” as a trademark throughout the EU, including protection in class 41 for: “entertainment, party organization, party execution”. This trademark application was published on December 1st, 2002 and entered in the register on April 30th, 2004.

In the following years, the trademark owner warned numerous organizers of “Malle” motto parties and referred to his exclusive trademark rights. Therefore, he called for an injunction and for damages. In 2019, after years of warnings, an application for annulment against the trademark “MALLE” was finally filed with the European Union Intellectual Property Office (EUIPO).

The EUIPO granted the application and justified its decision with the fact that the sign “Malle” is understood in German as a geographical indication of origin. Malle is known to everyone as a reference to the Spanish holiday island of Mallorca. In addition, the designation “Malle” as a purely geographical indication of origin should not be monopolized and is subject to the so-called requirement to keep it free. The plaintiff appealed against this decision of the Nullity Division. When this also followed the decision of the trademark office, the trademark owner sued the EUIPO before the ECJ Luxembourg and opposed the cancellation of his trademark. The party who had filed the application for a declaration of invalidity of the contested trademark was called into the proceedings as an intervener.

Judgment announced on December 15, 2021

The plaintiff’s years of warnings have now come to an end. As the ECJ ruled, the trademark “MALLE” remains deleted. With its judgment, it follows the previous decisions of the Invalidity Division of the EUIPO, as well as the decision of the 5th Board of Appeal of the EUIPO.

In a single plea, the plaintiff asserted that the term “Malle” was not a geographical indication of origin, but an imaginary term. In particular, the evidence submitted by the intervener did not establish any intellectual connection between the contested mark and the goods and services at issue. The court was not convinced by this argument.

The ECJ judges that the application for annulment is based on two pillars of reasoning. These are the absolute grounds for registration under Article 7(1)(c) and Article 7(1)(b) UMV. On the one hand, the trademark “Malle” should be deleted from the register due to its purely descriptive information and on the other hand also due to the lack of any distinctive character. However, the lawsuit is directed exclusively against the descriptive indication of the trademark and thus only against one of the two obstacles to registration. The application does not contain any reference to the lack of distinctiveness of the mark.

The CJEU states:

“20 The applicant has put forward a single plea in law, alleging essentially that the contested decision “falsely assesses the requirement and scope of the designation of geographical origin”. This wording of the plea is ambiguous, since it does not make it clear whether the plaintiff alleges breach of Article 7(1)(c) of Regulation 2017/1001, or breach of Article 7(1)(b) of that Regulation, or both of those provisions Wording to be considered in conjunction with other passages of the application relating to Article 7(1)(c) of Regulation 2017/1001, to “descriptive marks”, to the “descriptive character of a mark” and to “free characters”. This information suggests that the plaintiff seeks the annulment of the contested decision on the grounds that the contested mark is not descriptive en character and therefore does not fall within the scope of Article 7(1)(c) of Regulation 2017/1001.”

The plaintiff should therefore have defended himself against both obstacles to registration. Since he had only attacked one obstacle to registration in the statement of claim, the other remains in place.

This is further explained in the reasoning of the judgement:

“23 Consequently, even if the General Court upheld the plea alleging infringement of Article 7(1)(c) of Regulation 2017/1001, the refusal to register the contested mark based on Article 7(1)(b) of that regulation would remain unchallenged and therefore lawful and final against the plaintiff.

24 Accordingly, the sole plea alleging infringement of Article 7(1)(c) of Regulation 2017/1001 must be dismissed as ineffective.’

Since there is still an absolute ground for refusal, the register must be cleaned up and the “MALLE” mark deleted. It was therefore unnecessary for the court to go into further legal points.

“After the deletion of this “Malle” trademark, we are convinced that other owners of similar trademarks will find it significantly more difficult to issue warnings for the event and party sector. However, this judgment does not constitute a free ticket, so we urgently recommend that before using a mark, the third-party property rights to be observed.

If you have received a warning and want to solve the problem, contact us. We check whether the claims are justified and advise you on how to proceed,” explains Dr. Michael Metzner.

About Michael Metzner:

dr Michael Metzner is a lawyer for copyright and media law as well as for commercial legal protection and has been familiar with the complex issues for companies in the e-commerce sector for many years. His areas of specialization include e-commerce, online shops, trademarks and designs, copyright, and media and photo law. His law firm advises online retailers, online shop operators and all companies in e-commerce.

Office contact:

dr Metzner Lawyers
owner: dr. legal Michael Metzner
E-Mail: post (at) kanzlei-metzner.de
Tel. ++49 (0) 91 31 / 6 11 61 – 0

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Ruben Schaefer
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Original content by: Dr. Metzner Rechtsanwälte, transmitted by news aktuell


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