MAN v Rolls-Royce – How not to advertise your mark
Marcel Pemsel
MAN v Rolls-Royce – How not to advertise your mark
"Half the money I spend on advertising is wasted; the trouble is I don’t know which half."
I cannot help you with this either, but based on the General Court’s recent decision in MAN Truck & Bus v EUIPO (Case T-108/25), it is not wise to spend money on advertising explaining the descriptive character of your own trademark.
Background
MAN
Truck & Bus SE (“MAN”) obtained registration of the EU word mark
“V12X” for “engines and motors, for use in the following fields: boats,
ships, stationary applications, and parts of motors and engines and
replacement parts for the motors and engines” in May 2022.
In
December 2022, Rolls-Royce Power Systems AG (Rolls-Royce) filed an
invalidity application, arguing that the mark was both devoid of
distinctive character and descriptive (Art. 7(1)(b) and (c) EUTMR).
The
Cancellation Division of the European Union Intellectual Property
Office (“EUIPO”) rejected the invalidity application. On appeal, the
EUIPO’s Board of Appeal (“BoA”) reversed the decision and declared the
mark invalid in its entirety. The BoA found that the relevant public
would perceive “V12X” as a reference to high-quality and
high-performance marine engines with twelve cylinders in a
V-configuration. MAN was not happy and brought an action before the
General Court.
The General Court's decision
The General Court dismissed the action.
1. Admissibility of Evidence
a.
MAN challenged the admissibility of evidence submitted by Rolls-Royce,
arguing that the screenshots and links to websites submitted by
Rolls-Royce before the EUIPO were unsuitable as evidence under Art.
97(1) EUTMR.
The Court recalled that the EUTMR does not
prescribe the form of evidence. Art. 97(1) EUTMR provides a
non-exhaustive list of admissible evidence. Thus, the parties may choose
the evidence they wish to submit freely and neither the EUIPO nor the
BoA may reject specific types of evidence from the outset.
The
judges added that the mere possibility that website content could have
been manipulated is insufficient to question the credibility of
screenshots. The party challenging such evidence must demonstrate
credible and specific circumstances indicating manipulation or
falsification. MAN had failed to do so.
The fact that a URL does
not exist anymore or that the website’s content has been changed does
not cast doubt on the credibility of the screenshot showing the website
in its previous form.
b. MAN also argued that the evidence
submitted for the first time before the BoA was inadmissible. The Court
confirmed that the BoA had correctly exercised its discretion under Art.
95(2) EUTMR and Art. 27(4) EUTMDR.
The late-filed evidence was prima facie relevant, supplemented the
evidence already on file and responded, inter alia, to the EUIPO’s
criticism that the descriptive character of the element “X” had not been
sufficiently demonstrated.
2. Descriptive Character of “V12X”
a.
The Court confirmed that the relevant public consisted, inter alia, of
professionals with particular expertise and knowledge of marine engines.
This and their high level of attention do, however, not have an impact
on the assessment of absolute grounds. A few paragraphs later, the
judges noted that the high level of attention allows professionals to
grasp the descriptive character of a sign more easily.
b. The
judges also confirmed that the relevant public would consider the
element “V12” to be descriptive for marine engines. It was deemed a
well-known fact that “V12” designates an engine with twelve cylinders in
a V-configuration. Rolls-Royce had submitted ample evidence
demonstrating that this meaning was common knowledge in the marine
engine sector, including technical data sheets from MAN itself,
Caterpillar and Mercury as well as articles from trade magazines.
c.
The more interesting question was whether the element “X” is also
descriptive. The Court found that it is, based primarily on MAN’s own
marketing materials.
MAN’s website explained that the “X” in “V12X” stands for:
- the neXt generation of MAN engines;
- eXtra displacement (30 litres); and
- eXcellent power-to-weight ratio.
The
Court held that where a trade mark owner itself attributes a
descriptive meaning to a sign, this constitutes strong evidence that the
relevant public will perceive the sign in the same manner. This finding
was corroborated by the common practice in the marine engine market of
combining the designation “V12” with numbers or letters to indicate
engine performance (e.g. “V12-1550” for an engine with 1,550
horsepower).
The German Wiktionary entry defining “X” as a
symbol for “extra” was admitted as supplementary evidence. Even though
Wikipedia entries are, in themselves, unreliable because they may be
altered at any time by anyone, they can support other items of evidence
submitted by Rolls-Royce.
d. The Court held that the combination
“V12X” does not create a new meaning independent of or going beyond its
individual elements. The juxtaposition of “V12” and “X” corresponds to
the customary practices in the relevant market, where engine
designations commonly combine type information with performance
indicators. The professional public would perceive the descriptive
character more easily because of its increased level of attention.
e.
Finally, the Court noted that “V12” constitutes 75% of the sign and
appears at its beginning, meaning that the clearly descriptive character
of this element will attract the attention of the relevant public more
than the letter “X”.
3. Property Rights
MAN argued that the invalidation of the mark constituted an unjustified expropriation under Art. 17 of the Charter of Fundamental Rights.
The Court dismissed this argument, noting that the protection of
intellectual property rights is not absolute. EU trade marks exist
within the boundaries drawn by Artt. 4, 7 and 8 EUTMR. Where the
conditions for applying an absolute ground for invalidity are met, the
EUIPO has no discretion but must declare the mark invalid.
Comment
The key takeaways from the decision:
1.
Beware what your company/your client says in marketing materials. MAN’s
own promotional materials were used against it. By explaining that “X”
stood for “neXt generation”, “eXtra displacement” and “eXcellent
power-to-weight ratio”, MAN effectively provided Rolls-Royce with proof
that the sign was descriptive. The case is, however, rather an
exception. Usually, the EUIPO, BoA and the General Court discard such
evidence because it does not show that a significant part of the
relevant public is aware of this meaning.
2. If you wish to save
your trade mark from being found descriptive, do not argue a high level
of attention. This may backfire because highly attentive consumers are
more likely to identify the descriptive meaning.
3. Wikipedia is
still considered an unreliable source. Rather than quoting from
Wikipedia, it is advisable to rely on the sources cited in the Wikipedia
article.