Case C 445/12 P Rivella International AG v OHIM, Baskaya di Baskays Alim E.C. SAS, decided by the First Chamber of the Court of Justice of the European Union (CJEU) back on 12 December last, is one of those curious cases in which you know instinctively, but with absolute certainty and total confidence, that the appellant's case will fail, but the ground of appeal is far too attractive to leave unargued.
In October 2007 Baskaya applied to register as a Community trade mark (CTM) a figurative sign (depicted above right) in which the word “baskaya” was portrayed beneath a line of five stars. The goods in respect of which registration was sought were ‘meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats’ (Class 29), ‘coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice’ (Class 30) and ‘beers; mineral and aerated waters and other non alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’ (Class 32).
Up to this point, given Merpel's deep conviction that you'd have to consume a good quantity of beer, ale or porter before confusing the respective marks, this case seems perfectly normal: it follows the pattern of thousands of cases each year -- CTM application, somewhat spurious opposition. But now things start getting more interesting.
Swiss) Habsburg dynasty back in the days of William Tell. Said Rivella, take a look at Article 5 of the 1892 Convention between Switzerland and Germany on the reciprocal protection of patents, designs and trade marks [What! You've never heard of it?]. Under that convention, the argument goes, use of a trade mark in Switzerland is equivalent to its use in Germany. Ingenious, but in February 2010 the Opposition Division thought otherwise and rejected the opposition. In its view there there was no relevant proof of use of the earlier trade mark. The documents provided showed that Rivella's mark was used only in Switzerland and that the 1892 Convention did not affect Community trade mark law; they may as well have proved use in Kiribati or Vanuatu.
In 2010 Rivella appealed unsuccessfully to the Board of Appeal which was of the same view, stating that Articles 42(2) and (3) of the Regulation required an opponent's earlier trade mark to have been put to genuine use in the Member State in which it was protected. Nothing daunted, Rivella took their argument to a bunch of real judges, applying to the General Court to have the Board of Appeal's decision annulled.
Rivella then appealed further to the Court of Justice of the European Union, which also dismissed its argument. In its view:
* Rivella first argued that the General Court erred in law by applying the genuine use requirement provided for in Articles 42(2) and 42(3) of Regulation 207/2009 to its earlier trade mark, even though that trade mark was an international trade mark and was therefore not covered by those provisions. This could not however be the case: Article 42 makes no distinction between regular national trade marks and trade marks which are the subject of an international registration: the words “earlier national trade marks” mentioned in Article 42(3) must be understood as being trade marks which have effect in a Member State, regardless of whether they have been registered nationally or internationally. If Rivella were correct, the exclusion of international trade marks from the scope of the use requirement for earlier marks would circumvent the trade mark protection system of which Articles 42(2) and 42(3) form part, and would deprive them of their useful effect.
means a lot to cats ...
* Rivella's final shot was the argument that the use of Baskaya's mark might be prohibited in Germany by virtue of the 1892 Convention and that, if this were so, it could affect the unitary character of the Community trade mark. This was not really an argument. Article 111(1) of Regulation 207/2009 allows the proprietor of an earlier right which applies even to a particular locality to oppose the use of a CTM in the territory where his right is protected, in so far as the legislation of the Member State concerned so permits. The General Court was therefore correct to find that the principle of the unitary character of a trade mark was not absolute.
The IPKat respects Rivella's persistence and endeavour but wonders whether, before embarking on this opposition all those years ago, it might not have done better to spend on advertising, marketing and developing products under its own brand than to pay for litigation which will result in its brand being better known to lawyers throughout the European Union than to consumers in Germany.
Strange Conventions here
Fairport Convention here