Colloseum, a retailer of outerwear, started to sell jeans under the trade marks COLLOSEUM, S. MALIK and EURGIULIO. Those trousers had small rectangular red fabric tags, on which appeared the relevant brands or the word ‘SM JEANS’, sewn into the upper part of the outer right seam of the right rear pocket. Levi Strauss sued for trade mark infringement, seeking injunctive relief against Collloseum offering or marketing such trousers or stocking them for those purposes. Colloseum objected that it had never used Mark 6 at all.
Things started well for Levi Strauss; its application for injunctive relief was granted and and an appeal dismissed. Colloseum then appealed further on a point of law to the Bundesgerichtshof, which set aside the appeal court’s decision and remitted the case for further consideration. The appeal court again dismissed Colloseum’s appeal, so Colloseum appealed again.
This time,the Bundesgerichtshof noted that the outcome of the second appeal turned on the interpretation of Article 15(1) of Regulation 40/94 [which was repealed and re-enacted as Regulation 207/2009 over four years ago, but never mind]. That court thought that there would be a likelihood of confusion, on the basis of Article 9(1)(b) of Regulation No 40/94, between mark No 6 and the trouser styles marketed by Colloseum, should mark No 6 still be valid. But the big issue was this: had Mark 6 been put to genuine use within the meaning of Article 15(1)? That provision states:
"If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use".[a principle discussed in Case C‑553/11 Rintisch, noted here by the IPKat] applied. Even more of a headache was the plausible notion that Levi Strauss's use of the rectangular red tag with the word ‘LEVI’S’, when marketing trousers, resulted in genuine use of both Mark 6 and the word mark LEVI’S, since the combination of those two marks had itself been registered as Mark 3. Germany's finest court therefore decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:
‘Is Article 15(1) of Regulation 40/94 to be interpreted as meaning that:The Court of Justice made quite short work of this reference. Said the Court, distinctiveness of a mark means that the mark serves to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings, its essential function being to identify, in the eyes of consumers, the undertaking of origin of the goods. As for the acquisition of distinctive character, this may result both (i) from the use, as part of a registered trade mark, of a component of it and (ii) from the use of a separate mark in conjunction with a registered trade mark. In each cases, as we know from Case C‑353/03 Nestlé, it's only necessary to show that, in consequence of such use, the relevant class of persons actually perceives the goods or service, designated exclusively by that mark, as originating from a given undertaking.
1. a trade mark which is part of a composite mark and has become distinctive only as a result of the use of the composite mark can be used in such a way as to preserve the rights attached to it if the composite mark alone is used?
2. a trade mark is being used in such a way as to preserve the rights attached to it if it is used only together with another mark, the public sees independent signs in the two marks and, in addition, both marks are registered together as a trade mark?’
This being so, it doesn't matter whether the sign is used as part of a registered trade mark or in conjunction with the registered trade mark: all that matters that, as a consequence of that use, the sign in question serves to identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking. The same principle governs issues of genuine use. Accordingly,
"The condition of genuine use of a trade mark, within the meaning of Article 15(1) ... may be satisfied where a registered trade mark, which has become distinctive as a result of the use of another composite mark of which it constitutes one of the elements, is used only through that other composite mark, or where it is used only in conjunction with another mark, and the combination of those two marks is, furthermore, itself registered as a trade mark".The IPKat knew this was going to be an easy ruling when the Court dispensed with the need for an Advocate General's Opinion, and he feels a little sad that a question which, when viewed from a sensible commercial perspective, has to go backwards and forwards between national and European courts like a shuttlecock in order to get an answer which is blindingly obvious. Merpel wonders what use would have been served by a modern, user-friendly and pro-commerce trade mark system that reached the opposite view.
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