It's official: Switzerland still not part of Germany, even for trade mark purposes

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).

In June 2008 Rivella opposed this application, invoking a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation 40/94 (now Article 8(1)(b) of Regulation 207/2009). The opposition was based on the earlier international figurative mark, depicted on the left, with effect in Germany, Spain, France, Italy, Austria and the Benelux countries, for ‘beer, ale and porter; mineral and aerated waters and other non-alcoholic drinks; 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.

Baskaya asked Rivella to provide proof of use of its earlier trade mark, at which point Rivella qualified its case somewhat. We are only maintaining our opposition in respect of the German bit of our international registration, they said, adding "and here are some documents showing proof of use in ... (wait for it) ... Switzerland!". This was a bit of a surprise to Merpel, who was fairly sure that (i) Switzerland was a sort of land-locked iceberg that lay right in the middle of the European Union but was not part of it and that (ii) Switzerland is not, was not and probably never will be part of Germany, though it was nearly misappropriated by the Austrian branch of the (originally 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.

The General Court proved as resistant to Rivella's arguments as had the Opposition Division and Board of Appeal. In its view, questions relating to the proof furnished in support of the grounds for a CTM opposition, and questions relating to the territorial aspect of the use of marks, were governed exclusively by the relevant provisions of Regulation 207/2009, irrespective of the domestic law of the Member States.  Accordingly the national or international nature of an earlier national trade mark cited in Community opposition proceedings in no way means that the national law applicable to that earlier trade mark will be applied in CTM proceedings. Although procedures for the registration of national trade marks were covered by the national law of each Member State, the same could not be said of the determination of the territory in which genuine use of the earlier trade mark must be established for CTMs, as that question was governed by EU law.

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.

"Territorial validity"
means a lot to cats ...

* Rivella also argued that the question of the ‘territorial validity’ of a national trade mark rather than a CTM was exclusively governed by national law, especially in the case for national trade marks which were registered under international arrangements and had effect in a Member State. However, the CJEU had already established that the national concept of a defensive trade mark, under which an earlier trade mark was protected on the basis of national law even if its use could not be established, could not be used to oppose the registration of a CTM. On this basis, unless the legislation governing CTMs could not be said to have harmonised the concept of use of a trade mark, the General Court was not wrong to rule that the concept of use of a CTM in the European Union was exhaustively and exclusively governed by EU law.

* 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