Use of a different form of trade mark can still be genuine use
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Patents / Competition
(C-553/11 Bernard Rintisch v Klaus Eder)
The Court of Justice of the European Union ("CJEU") has confirmed that use of a trade mark in a form that is different to the mark as registered can be sufficient for proving genuine use, where the differing elements do not alter the distinctive character of the mark. There is no need to consider the intention behind the mark and it is irrelevant that the mark, as used, is also a registered mark.
Mr Rintisch owned German trade mark registrations PROTIPLUS (registered in 1996), PROTI POWER & Device and PROTI (both registered in 1997) covering, among other things, protein based products. Mr Eder owned a later German registration for PROTIFIT (registered in 2003) for food supplements, vitamin preparations and dietetic foodstuffs.
Mr Rintisch applied to cancel Mr Eder's PROTIFIT trade mark and sought an injunction preventing him from using that mark. The actions were based on Mr Rintisch's earlier trade marks registrations and, because they were over five years old, Mr Rintisch needed to prove use of those marks under Article 10(1) of The Trade Marks Directive (89/104 (now replaced by Directive 2008/95/EC)). Mr Rintisch argued that he had used PROTIPLUS and PROTI POWER (& Device) during the relevant period but Mr Eder contended that this didn't constitute use of the PROTI mark.
The German Court asked the CJEU to confirm whether use of PROTIPLUS and PROTI POWER & Device could be considered genuine use of the trade mark PROTI, even though PROTI had itself been registered.
The Court held that use of a mark in a different form can be relied upon for genuine use provided the distinctive character of that trade mark has not been altered. This is still the case if the form of mark as used is itself a registered trade mark.
There is nothing in Article 10 to preclude "defensive" trade marks. Although they are not specifically provided for in the Trade Marks Directive, the intention behind trade mark registrations is irrelevant for the purposes of deciding genuine use.
The Court distinguished the situation where a party sought to rely on registrations for an alleged family of marks. In those circumstances, it was still necessary to prove use of each variant (Il Ponte Finanziaria v OHIM).
Brand owners should welcome this decision, as it may allow them to update their brands over time, without the requirement that their trade mark portfolio reflects the exact version of the mark used. Original trade mark registrations may be supported by the use of a mark (registered or not) which does not differ substantially in its distinctive character. However, re-filing should be considered where marks are being used in a way that alters the distinctive character of the registrations.
Brand owners might also now consider applying to register close variations of trade marks for defensive purposes, since these registrations can be supported by use of the primary mark. However, they should still be aware of bad faith provisions and the requirement in some Member States of an intention to use a mark as applied for.