Family of trade marks, defensive strategies and genuine use: CJEU speaks out in Rintisch

This morning the Court of Justice of the European Union (CJEU) delivered its judgment in Case C-553/11 Bernard Rintisch v Klaus Eder, a reference from the Bundesgerichtshof (Federal Court of Justice, Germany) concerning the circumstances in which a trade mark can be regarded as having been put to genuine use, pursuant to Article 10(1) and 2(a) of Directive 89/104/EEC [this Directive has now been replaced by Directive 2008/95/EC] (see earlier IPKat post here).

The reference was made in proceedings between Mr Rintisch and Mr Eder "concerning the genuine use of a trade mark, used in a form differing in elements which do not alter its distinctive character from the form in which that trade mark was registered, the form used being itself registered as a trade mark" [Merpel has still to recover from the strong headache she got just trying to understand what this case was about].

Background

Mr Rintisch is the proprietor of the national word marks PROTIPLUS (registered in 1996) and PROTI (registered in 1997), as well as the word/figurative mark Proti Power (also this was registered in 1997). All these trade marks are registered for, among other things, protein-based products.

Leonard does not seem very impressed
with his new high-protein dietetic routine

Mr Eder is the proprietor of the later word mark Protifit, registered in 2003 for food supplements, vitamin preparations and dietetic foodstuffs. 

Mr Rintisch brought an action seeking, firstly, consent from Mr Eder to cancellation of the trade mark Protifit and, secondly, prohibition on use of that trade mark, relying on the rights deriving from his earlier trade marks PROTIPLUS and Proti Power. When Mr Eder contended in defence that Mr Rintisch had failed to use the trade mark PROTI, Mr Rintisch responded that he had put that trade mark to use by using the trade names ‘PROTIPLUS’ and ‘Proti Power’. 

Having both the court of first instance and the court of appeal dismissed Mr Rintisch's action, he brought an action before the Federal Court of Justice.

Although differing from the trade mark PROTI, the Curt held that the trade names ‘PROTIPLUS’ and ‘Proti Power’ did not alter the distinctive character of that trade mark and that the applicant had put the trade marks PROTIPLUS and Proti Power to genuine use (for the purposes of Paragraph 26(3) of the MarkenG) before the publication of the registration of Protifit. The Federal Court was however unsure as to whether the second sentence of Paragraph 26(3) (“Use as a registered trade mark is also the use of the mark in a form that is different from the registration, where the deviations of the characterizing not change character of the mark. Sentence 1 shall apply even if the brand is the form in which it was used, also shown.”) was consistent with Article 10(1) and (2)(a) of Directive 89/104. Thus, it decided to stay the proceedings and refer the following questions to the CJEU for a preliminary ruling:

‘1.   Must Article 10(1) and (2)(a) of Directive [89/104] be interpreted as meaning that in principle this provision generally precludes a national rule pursuant to which the use of a trade mark (Trade Mark 1) must be presumed even if the trade mark (Trade Mark 1) is used in a form differing from the form in which it was registered, without the differences altering the distinctive character of the trade mark (Trade Mark 1), and if the trade mark in the form used is also registered (Trade Mark 2)? 

2.   If question 1 is answered in the negative:

Is the national provision described in the first question compatible with Directive [89/104] if the national provision is interpreted restrictively as meaning that it is not applicable to a trade mark (Trade Mark 1) which is registered only in order to secure or expand the protection of another registered trade mark (Trade Mark 2) that is registered in the form in which it is used?

3.   If question 1 is answered in the affirmative or question 2 is answered in the negative:

(a)   Is there no use of a registered trade mark (Trade Mark 1) within the meaning of Article 10(1) and (2)(a) of Directive [89/104]:

(i)   if the trade mark proprietor uses the form of a sign which differs only in elements from the form in which it (Trade Mark 1) and a further trade mark (Trade Mark 2) of the trade mark proprietor are registered but the differences do not alter the distinctive character of the trade marks (Trade Mark 1 and Trade Mark 2);

(ii)  if the trade mark proprietor uses two forms of sign, neither of which corresponds to the registered trade mark (Trade Mark 1), but one of the forms used (Form 1) is the same as another registered trade mark (Trade Mark 2) of the trade mark proprietor and the second form used by the trade mark proprietor (Form 2) differs in elements from both registered trade marks (Trade Mark 1 and Trade Mark 2), without the differences altering the distinctive character of the trade marks, and if this form of sign (Form 2) displays greater similarity to the other trade mark (Trade Mark 2) of the trade mark proprietor?

(b)  Is a court of a Member State permitted to apply a national provision (here the second sentence of Paragraph 26(3) of the [MarkenG]) which conflicts with a provision of a directive (here Article 10(1) and (2)(a) of Directive [89/104]) in cases in which the facts of the case had already occurred prior to a decision of the Court of Justice of the European Union in which indications of the incompatibility of the Member State’s legislation with the provision of the directive became apparent for the first time (the judgment of 13 September 2007 in Case C‑234/06 P Il Ponte Finanziaria v OHIM … [2007] ECR I 7333) [noted here] if the national court values the reliance of a party to the court proceedings on the validity of his position, secured under constitutional law, more highly than the interest in the implementation of a provision of the directive?’

The response of the CJEU

Family of trade marks and genuine use

The first question and point (a) of the third question concerned whether the proprietor of a registered trade mark is precluded from relying, in order to establish whether there has been genuine use, on the fact that this is used in a form which differs from the form in which it was registered, without the differences between the two forms altering the distinctive character of that trade mark, even though that different form is itself registered as a trade mark.

The Court observed that, in compliance with Article 5.C.(2) of the Paris Convention, nothing in the wording of Article 10(2)(a) implies that the different form in which the trade mark is used cannot itself be registered as a trade mark. This is because the purpose of Article 10(2)(a) is to allow the proprietor of the mark, in the commercial exploitation of the sign, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned.

Defensive strategies do not always
require Kats
to hide under a carpet

Therefore, in line with the judgment in Il Ponte Finanziaria, "the proprietor of a registered trade mark is not precluded from relying, in order to establish use of the trade mark for the purposes of [Article 10(2)(a)], on the fact that it is used in a form which differs from the form in which it was registered, without the differences between the two forms altering the distinctive character of that trade mark, even though that different form is itself registered as a trade mark."

Defensive trade marks

By its second question, the German court had asked whether Article 10(2)(a) must be interpreted as precluding an interpretation of the national provision intended to transpose it into domestic law whereby Article 10(2)(a) does not apply to a ‘defensive’ trade mark which is registered only in order to secure or expand the protection of another registered trade mark that is registered in the form in which it is used.

The Court responded that nothing in Article 10(2)(a) is such as to make it inapplicable to such an instance, in that the subjective intention prevailing when it is sought to register a trade mark is wholly irrelevant for the purpose of applying that provision. 

Bruno has still no clue about how temporal
validity of CJEU judgments works in practice

Temporal validity of CJEU judgments

By point (b) of its third question, the referring court had sought clarification as to under what circumstances a judgment of the Court should take effect, in some or all respects, only for the period after the date on which it was delivered.

The Court decided not to address this point, in that the question had been raised on the assumption that there was a conflict between the second sentence of Paragraph 26(3) of the MarkenG, and Article 10(1) and (2)(a) of Directive 89/104. Neither the answer to the first question and point (a) of the third question nor the answer to the second question coincided with that assumption, held the Court.

While finding this judgment pretty sensible overall, this Kat regrets that the CJEU decided not to offer clarification as to the issues underlying point (b) of Question 3. This is especially in light of: (1) ever-growing activism of the CJEU in the field of IP, which in some instances seems to be tantamount to actual legislation, besides or in lieu of legislative initiatives on the side of the Commission, and (2) increasing uncertainties as to how the EU principle of respecting acquired rights and legitimate expectations is to be applied in IP cases.