The EUIPO Board of Appeal recently decided that the mark Shavette was not customary or descriptive, but was instead able to fulfil the functions of a trade mark. The evidence provided by the cancellation applicant showed use of the mark in the UK as of the filing date as a term for detachable replacement razor heads. However, the Board of Appeal disregarded this evidence because, due to Brexit, it was no longer admissible post 1 January 2021.
The proceedings highlight the need to collate evidence seeking to challenge a mark's validity carefully, both to fulfil the procedural requirements and also to build a clear picture. "Arbitrarily chosen" websites, sporadic use, and isolated cases will not be enough when it comes to proving customary use and descriptiveness – consistent patterns are needed.
Background
The Shavette mark was registered in 2014 in classes 8 and 21 for razors and accessories in the EU. In 2018, Sineclo International filed to invalidate the mark on the basis that it was descriptive, and the term was customary due to use at the filing date. The EUIPO Cancellation Division partially declared the mark invalid for non-electric razors and accessories. However, the Board of Appeal re-evaluated the evidence and found the Shavette mark was neither descriptive nor customary.
Decision
In invalidity proceedings, as opposed to oppositions, there is a presumption of validity regarding the registered trade mark, and so the burden of proof rests entirely with the cancellation applicant. A trade mark can only be declared invalid if the specific facts show in a "consistent and unequivocal" way that the relevant grounds – in this case customary usage and descriptiveness – applied at the time of filing the application.
Evidence post-Brexit
A key point which impacted the outcome was that evidence relating to an absolute ground of invalidity in the UK was no longer relevant after the end of the Brexit transition period (31 December 2020), regardless of when the application for invalidity was made. In this case, whilst the Cancellation Division took into account UK evidence relating to websites where "shavette" was used as a reference for a type of razor, YouTube videos and discussions on forums, this evidence was no longer admissible before the Board of Appeal.
Customary usage
A mark can be declared invalid if it was customarily used at the time of filing. By a mark being customary, it means it is not capable of distinguishing goods and services from others thereby not fulfilling the essential function of a trade mark.
Whilst the cancellation applicant provided evidence to support its claim that the Shavette mark was customary as at the date of filing the application, the UK evidence was not (as explained above) admissible. The Board also dismissed other evidence for failing to support a claim that Shavette was customary. For example, Wikipedia entries were dismissed given their low probative value (as they can be amended at any time, anonymously). Further, a list of YouTube results was inadmissible for two reasons: first, it only contained titles of entries rather than actual content, meaning it was not possible to examine whether the word 'Shavette' was used in a customary way. Secondly, the list did not include the dates of the videos, so it was not possible to conclude the entries were from the relevant period.
An extract from a German website, stating "Shavette is often used as a synonym of an interchangeable razor blade", was found to be admissible. However, the website also stated that Shavette was a trade mark owned by Dovo. By recognising the mark as a trade mark, the Board held this evidence did not show use of the mark in a customary way.
Descriptiveness
Trade marks will be refused registration if they are descriptive, due to the underlying general public interest against ringfencing descriptions of items as trade marks. Indeed, a sign will be refused registration if at least one of its possible meanings designates a characteristic of the goods and services concerned.
In this case, the Board decided there were "too many mental steps" for Shavette to be considered descriptive. The Board accepted that the mark relates to the verb "to shave". However, the way of adding "ette" to create a diminutive word was not common in English and the Board held that the relevant public would not understand that the proprietor of the mark may have been inspired to use that rule of English grammar in an unusual way. As such, these elements were not sufficiently direct to establish a relationship with the goods in question, and so the Shavette mark was also not descriptive.