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Friday, 29 January 2016

We've got five years, that's all we've got

Earlier today, the IPKat mentioned the late, lamented David Bowie and a somewhat tenuous connection to patents (see Friday Fantasies). In the interests of equality for trade mark practitioners, the IPKat notes an equally tenuous Bowie link for them to marvel at: the opening track of The Rise and Fall of Ziggy Stardust and the Spiders from Mars is the song Five Years, from which the title of this post is borrowed (the first televised performance is here, but do come back when you've watched it).

In the song, five years is the length of time until the earth's foreseen destruction; in trade mark law it's slightly less apocalyptic but important nonetheless. Five years is the period within which a proprietor must put a registered mark into genuine use following registration, if revocation for non-use is to be avoided.

Which leads us to the point of this post, admittedly in a slightly roundabout fashion. The IPKat has learnt of a reference to the CJEU (Case C-654/15) from the Swedish Supreme Court (its case no. T 3403-14) asking two questions on "genuine use" of trademarks.

Länsförsäkringar's CTM No. 005423116.
They also have the same sign registered
with blue "L" shapes and a red central square
At issue is the question whether a proprietor's exclusive rights can be deemed to be limited to the goods and services on which the mark is actually used:

"1. Is it relevant for the proprietor of exclusive rights that it within a period of five years following registration has not put the Community Trade Mark to genuine use in connection with the goods or services in respect of which it was registered?
2. If the answer to question 1 is yes, under which conditions and how does this effect the exclusive right?"
News of this referral comes from James Russell, a Masters student in Uppsala, Sweden. James tells us that the reference arose from a dispute between Länsförsäkringar AB (a Swedish insurer and bank) and Matek A/S (an Estonian timber house producer).

Länsförsäkringar alleged infringement of their registered Community trade mark in respect of a device shown (above right) in black and white (they have a second registration for a colour version with the "L" shapes in blue and the central square in red).

Länsförsäkringar's registration covered goods and services in several classes, including construction services in class 37, but at the time of the alleged infringement, just two years after registration, the mark had not been used in relation to construction.

Matek's mark
Matek's mark (left) was nationally registered in respect of construction goods in class 19.

There was therefore held to be formal similarity between the services for which the CTM had been registered and the goods for which Matek had a registration ... but there was no use by Länsförsäkringar in relation to those services.

At first instance, an injunction was granted to Länsförsäkringar. On appeal this decision was reversed, with the Court of Appeal concluding that under Art. 9(1)(b) confusing similarity has to be assessed by reference to the proprietor's actual use of the trademark, even within the first five years of its registration, rather than as a "paper exercise". As such, the Court held, to the extent that Länsförsäkringar had not actually used the mark for manufacturing and sale of houses, the mark's protection should be restricted accordingly, and there was no infringement by Matek.

Länsförsäkringar therefore appealed to the Supreme Court, arguing that within the first five years "grace period" they can protect uses of the mark for which registration was granted, even if there has been no actual use of the mark for these goods/services at that time. The CJEU should tell us which approach is the correct one within the first five years of registration.

This Kat understood the exclusive rights under Article 9 to be absolute and to be defined in relation to the goods and services for which the mark is registered. The possibility of revocation for non-use after five years is a separate "use it or lose it" provision clearly giving a trade mark owner reasonable time to expand the use of the mark across the scope of the registration, and giving third parties an opportunity to remove unused marks from the register. If the rights of the owner were to be defined by actual use from day one, then this Kat believes that the legislation would have said so.

James and the rest of the Masters class in Uppsala, not to mention the IPKat, would be very interested to hear the views of readers on how the CJEU ought to answer the questions referred to it.

1 comment:

H Lee said...

The only conclusion that can surely be reached is that the use of the mark can only be considered after 5 years have passed.

It is not a requirement of the CTM system for a trade mark to be in use prior to registration. Without such a requirement it is necessary to have a time limit by which point the trade mark has to have been commercially exploited, this time limit is the period of 5 years detailed in Art 15 CTMR.

However, it seems to me that the first question is misleading, as it implies that there has been no use of this mark within the first five years (which would of course be relevant), as opposed to there being no use within the the first two years from the registration as is the case in the current proceedings, which should not be relevant.

I am, however, curious of what the result would be if such an action were to brought only a few weeks prior to the 5 year point. In so far as, where a mark had not been used previously, could a court reasonably infer that it is not possible for the proprietor to make genuine use of it prior to the fifth year and therefore cancel the registration on such a presumption?

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