When an individual trade mark is not sufficient

EU trade mark law knows three kinds of trade marks: individual marks, collective marks (Art. 74 EUTMR) and certification marks (Art. 83 EUTMR):

• An individual trade mark distinguishes the goods and services offered under the mark from those of other undertakings.
• A collective mark distinguishes the goods and services of the members of the association, which is the proprietor of the mark, from those of other undertakings (Art. 74(1) EUTMR).
• A certification mark distinguishes goods and services, which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified (Art. 83(1) EUTMR).

Applying for the right kind of mark is crucial for successfully defending the trade mark, as the recent General Court judgment in DPG Deutsche Pfandsystem v EUIPO - Užstato sistemos administratorius (case T-774/21) shows.

Background

DPG Deutsche Pfandsystem GmbH (‚DPG‘) is part of the German recycling system for beverage packaging, i.e. bottles and cans made of plastics, glass or metals. On most of such beverages, consumers have to pay a deposit of a few Euro cents, which they will get back once they return the empty beverage packaging. In order to indicate that a particular beverage packaging is part of this system, the following sign is printed on its surface: 

DPG obtained registration of this sign as EU trade mark no. 4564993 in 2007 for a broad range of goods and services in classes 6, 9, 16, 20, 21, 35, 39, 40, 42, including various beverage packaging and recycling services.

In 2015, Užstato sistemos administratorius VšĮ (‘UsaV’), filed an application for registration of EU trade mark no. 014481519 for services in classes 35, 39, 40 and 42 for the following sign: 

DPG filed an opposition against UsaV’s application. UsaV requested DPG to provide evidence of genuine use of its EU trade mark. DPG submitted inter alia:

· Pictures of the trade mark on beverage packaging and automatic recycling and sorting machines:

· ‘Terms and Conditions of Participation in the DPG System showing the earlier mark on each page;

· Screenshots of DPG’s website www.dpg-pfandsystem.de;

· Invoices for the annual participation fee for the members of the DPG System showing the earlier mark.

The EUIPO’s Opposition Division rejected the opposition because it found that DPG did not establish genuine use. The Board of Appeal dismissed DPG’s appeal. It held that the earlier mark would not be perceived as an indication of the commercial origin but only as a descriptive indication that the goods consist of disposable packaging, which is subject to a mandatory deposit scheme. On DPG’s terms and conditions and its website, DPG and its services were identified by their name, while the use of the earlier sign served a merely decorative purpose. DPG appealed to the General Court.

The General Court’s decision

The General Court agreed with the Board of Appeal and dismissed the appeal.

The relevant public consisted of commercial or administrative entities making use of recycling services, i.e. business consumers.

Genuine use of an individual mark requires the mark to be used in accordance with its essential function, which is to guarantee the identity of origin of the marked goods or services to consumers or end users by enabling them, without any possibility of confusion, to distinguish the goods or services from others, which have another origin. For the trade mark to fulfil its essential role in the system of undistorted competition, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality.

The Court referred to the CJEU judgment in W. F. Gözze Frottierweberei and Gözze (C‑689/15), where the latter found that an individual mark is not used in accordance with the origin function if the relevant public perceives it as a sign intended to certify the composition or quality of the goods or services, without guaranteeing to consumers that the goods or services come from a single undertaking under the control of which they are manufactured or supplied and which, consequently, is responsible for the quality of those goods or services.

It was undisputed that the earlier mark was affixed to an estimated 15 to 16 billion items of disposable drinks packaging per year, which were placed on the German market. Business consumers had, during the relevant period, a high level of awareness of the earlier sign and of the fact that the sign was used primarily as a marking element certifying that the disposable drinks packaging was subject to a deposit system, i.e. DPG’s system. Therefore, the sign fulfilled a certification function. But did it also indicate the commercial origin? The General Court answered in the negative.

Although the mark was used on terms and conditions as well as on invoices, the graphic elements of that sign (the bottle, the can and the curving arrow pointing to the left) are symbols used throughout the EU to denote the recycling process or recycling services and are placed on items to be recycled. When this sign is affixed to a legal document, it will be understood as referring to the recycling process and to the fact that certain goods are subject to a specific recycling system. This perception is supported by the references to the sign in DPG’s terms and conditions as a marking element of disposable drinks packaging for the purpose of certifying that the goods are covered by DPG’s system.

The General Court applied a similar reasoning to the earlier mark’s use on invoices. The earlier sign is not designed to refer to the commercial origin of a specific category of goods or services, but rather to the fact that certain goods are subject to a specific recycling system.

As regards DPG’s website, the Court found that the services provided by DPG are associated with its business name (‘DPG Deutsche Pfandsystem GmbH’). By contrast, the earlier sign is present only at the top left of the website, with the result that business consumers are not guided on DPG’s website by any element that is sufficiently clear to enable them to associate the services concerned with that sign. Further, the website’s FAQ section states that compliance with regulatory requirements concerning marking of disposable drinks packaging necessitates displaying the earlier sign on beverage packaging. The judges concluded that the sign is presented as being a marking element used for the purposes of certifying that the packaging is part of the DPG system.

Comment

Certification marks are still a rather rare breed. The reason why they are not relevant to many companies is that the owner may not supply the goods or services it certifies Art. 83(2) EUTMR. Even if a company qualifies as an owner (like DPG), some shy away from the effort of filing a certification mark because they require submission of regulations governing the use of the certification mark Art. 84 EUTMR. Any amendment of the regulations must be submitted to the EUIPO and it is only valid once the amendment is entered into the register (Art. 88 EUTMR). However, as the case above shows, an individual mark is not a viable alternative, at least not after the lapse of the 5-year grace period for non-use.