The CJEU has rendered an important judgment on the topic of genuine use. In its judgment the CJEU found that it is possible that only using a figurative element of a composite mark (consisting of a figurative element and a word) could constitute genuine use of the trade mark. Non-use (non-usus) opens the possibility for third parties to have the trade mark revoked.
The matter brought before the CJEU originated from an opposition procedure before the EUIPO, where, among other things, Cactus S.A. opposed a trade mark registration based on its composite EUTM (in multiple classes). The applicant of the opposed trade mark, as a means of defence, requested proof that Cactus S.A.'s earlier mark had been put to genuine use.
Genuine use
Article 15(1) EUTMR provides as follows on genuine use:
"1. If, within a period of five years following registration, the proprietor has not put the [EU] trade mark to genuine use in the [Union] in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the [EU] trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.
The following shall also constitute use within the meaning of the first subparagraph:
- use of the [EU] trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered;"
Cactus S.A. was, at some point, only able to show the use of the figurative element consisting of a depiction of a cactus whilst the trade mark as registered consisted of the figurative cactus and the word element 'Cactus' as depicted below:
One of the questions the CJEU had to answer was whether it was possible for only the use of the figurative element without the word element to constitute genuine use of the mark as registered.
The EUIPO Board of Appeal held that Cactus S.A. had filed insufficient evidence of genuine use because the evidence only showed the figurative element, and entirely omitted the word element. In contrast, the General Court found that the use of the figurative element of a cactus without the word element constituted genuine use of the figurative mark because both signs conveyed the same semantic content.
CJEU 11 October 2017, C-501/15 (Cactus)
The CJEU, with reference to its Specsavers case (C-252/12), recalled that it directly follows from Article 15(1)(a) EUTMR that the use of the trade mark in a form which differs from the form in which it was registered is regarded as use for the purposes of the first subparagraph of that article, provided that the distinctive character of the mark in the form in which it was registered is not altered. In so far as it does not impose strict conformity between the form in which the trade mark is used and the form in which the mark was registered, the purpose of Article 15(1)(a) EUTMR is to allow its proprietor, on the occasion of its commercial exploitation, 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 (CJEU Specsavers).
The CJEU furthermore ruled that the condition of 'genuine use' (as meant in Article 15(1)(a) EUTMR) is satisfied even where only the figurative element of a composite mark is used, as long as the distinctive character of that mark, as registered, is not altered.
In this particular case the CJEU found that the EUIPO could not criticise the General Court for not having verified the extent to which the part of the trade mark omitted, namely the word element 'Cactus', had a distinctive character and was important in the perception of the sign as a whole, when the Court rightly compared the sign as used in its abbreviated form to the sign as registered. The Court found that the absence of the word element in the abbreviated version of the earlier figurative mark was not sufficiently important (i.e. the word element 'Cactus' did not possess a distinctive character that was different from that of the stylised cactus) in the perception of that mark as a whole as to alter its distinctive character.
Comment
This judgment will be of particular interest in relation to trade marks where the word element and figurative element of their marks carry the same meaning. It is stressed that non-usus can lead to revocation of the trade mark by a third party.
Normally the word element within a composite mark will be seen as the dominant element. For this reason, at first glance, it seems surprising that omitting the word element does not (automatically) result in a change in the distinctive character of the trade mark. Understandably, the CJEU cannot however rule out that this would never be the case.
It is important to note that the CJEU did not have to take account of all grounds for appeal of the EUIPO, because they related to the appraisal of relevant facts and the assessment of evidence whilst only points of law are subject to review by the CJEU. In this regard an interesting argument put forward by the EUIPO although it was not admissible was that, as to the question on the alteration to the distinctive character, the perception of European consumers had to be taken into account. This would, according to the EUIPO, result in the stylised cactus not being equated with the word cactus or the trade mark as registered since the equivalent term is spelt and pronounced differently in the various languages of the EU. It will definitely be interesting to see how the courts will cope with the argument regarding various translations.
The CJEU has rendered an important judgment on the topic of genuine use. In its judgment the CJEU found that it is possible that only using a figurative element of a composite mark (consisting of a figurative element and a word) could constitute genuine use of the trade mark. Non-use (non-usus) opens the possibility for third parties to have the trade mark revoked.
The matter brought before the CJEU originated from an opposition procedure before the EUIPO, where, among other things, Cactus S.A. opposed a trade mark registration based on its composite EUTM (in multiple classes). The applicant of the opposed trade mark, as a means of defence, requested proof that Cactus S.A.'s earlier mark had been put to genuine use.
Genuine use
Article 15(1) EUTMR provides as follows on genuine use:
"1. If, within a period of five years following registration, the proprietor has not put the [EU] trade mark to genuine use in the [Union] in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the [EU] trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.
The following shall also constitute use within the meaning of the first subparagraph:
- use of the [EU] trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered;"
Cactus S.A. was, at some point, only able to show the use of the figurative element consisting of a depiction of a cactus whilst the trade mark as registered consisted of the figurative cactus and the word element 'Cactus' as depicted below:
One of the questions the CJEU had to answer was whether it was possible for only the use of the figurative element without the word element to constitute genuine use of the mark as registered.
The EUIPO Board of Appeal held that Cactus S.A. had filed insufficient evidence of genuine use because the evidence only showed the figurative element, and entirely omitted the word element. In contrast, the General Court found that the use of the figurative element of a cactus without the word element constituted genuine use of the figurative mark because both signs conveyed the same semantic content.
CJEU 11 October 2017, C-501/15 (Cactus)
The CJEU, with reference to its Specsavers case (C-252/12), recalled that it directly follows from Article 15(1)(a) EUTMR that the use of the trade mark in a form which differs from the form in which it was registered is regarded as use for the purposes of the first subparagraph of that article, provided that the distinctive character of the mark in the form in which it was registered is not altered. In so far as it does not impose strict conformity between the form in which the trade mark is used and the form in which the mark was registered, the purpose of Article 15(1)(a) EUTMR is to allow its proprietor, on the occasion of its commercial exploitation, 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 (CJEU Specsavers).
The CJEU furthermore ruled that the condition of 'genuine use' (as meant in Article 15(1)(a) EUTMR) is satisfied even where only the figurative element of a composite mark is used, as long as the distinctive character of that mark, as registered, is not altered.
In this particular case the CJEU found that the EUIPO could not criticise the General Court for not having verified the extent to which the part of the trade mark omitted, namely the word element 'Cactus', had a distinctive character and was important in the perception of the sign as a whole, when the Court rightly compared the sign as used in its abbreviated form to the sign as registered. The Court found that the absence of the word element in the abbreviated version of the earlier figurative mark was not sufficiently important (i.e. the word element 'Cactus' did not possess a distinctive character that was different from that of the stylised cactus) in the perception of that mark as a whole as to alter its distinctive character.
Comment
This judgment will be of particular interest in relation to trade marks where the word element and figurative element of their marks carry the same meaning. It is stressed that non-usus can lead to revocation of the trade mark by a third party.
Normally the word element within a composite mark will be seen as the dominant element. For this reason, at first glance, it seems surprising that omitting the word element does not (automatically) result in a change in the distinctive character of the trade mark. Understandably, the CJEU cannot however rule out that this would never be the case.
It is important to note that the CJEU did not have to take account of all grounds for appeal of the EUIPO, because they related to the appraisal of relevant facts and the assessment of evidence whilst only points of law are subject to review by the CJEU. In this regard an interesting argument put forward by the EUIPO although it was not admissible was that, as to the question on the alteration to the distinctive character, the perception of European consumers had to be taken into account. This would, according to the EUIPO, result in the stylised cactus not being equated with the word cactus or the trade mark as registered since the equivalent term is spelt and pronounced differently in the various languages of the EU. It will definitely be interesting to see how the courts will cope with the argument regarding various translations.