ECJ considers use of trademark in different form

In Rintisch v Eder (Case C-553/11, October 25 2012), a reference for a preliminary ruling from the Federal Court of Justice, Germany, the Court of Justice of the European Union (ECJ) has considered the interpretation of Article 10 of the First Trademarks Directive (89/104/EEC) (now replaced by the Trademarks Directive (2008/95/EC)), confirming that use of a trademark 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, even if that mark itself is registered. Further, the intentions behind the registration of a trademark are irrelevant for the purposes of interpreting this section.  

Bernhard Rintisch owns the German registrations for PROTIPLUS (registered in 1996), PROTI POWER (and device) and PROTI (both registered in 1997) covering, among other things, protein-based products. Klaus Eder owns a later German registration for PROTIFIT (registered in 2003) for food supplements, vitamin preparations and dietetic foodstuffs.

Rintisch brought an action against Eder seeking cancellation of the trademark PROTIFIT, prohibition of use of that trademark and compensation for the damage he claimed he had sustained. He based his claims mainly on his earlier trademark PROTI and, in the alternative, on the marks PROTIPLUS and PROTI POWER (and device).   

As Rintisch's earlier rights were over five years old from registration, he was required to prove use of those marks under Article 10(1) of the directive. Rintisch argued that he had put the trademarks PROTIPLUS and PROTI POWER (and device) to genuine use during the relevant period. However, Eder contended that Rintisch had failed to use the trademark PROTI.

The German court wanted clarity from the ECJ as to whether use of PROTIPLUS and PROTI POWER (and device) would be regarded as genuine use of the trademark PROTI, even though PROTI had also been registered, as argued by Rintisch. 

The ECJ found that, provided the use of the mark does not alter the distinctive character of that trademark, use of a mark in a different form can be relied upon to support it even if that form is itself a registered trademark.  There is no additional requirement that the different form of the mark is not itself registered.

The judgment refers to the earlier case of Il Ponte Finanziaria v OHIM (Case C-234/06 P) at Paragraph 86 where the court had held that:

"it is not possible to extend, by means of proof of use, the protection enjoyed by a registered trademark to another registered mark, the use of which has not been established, on the ground that the latter is merely a slight variation on the former".  

The ECJ clarified that the finding in Il Ponte Finanziaria related specifically to cases where a party sought to rely on registrations for an alleged family of marks, in which case use of each variant needs to be proved.

The ECJ also found that this interpretation of Article 10 does not preclude application to 'defensive' trademarks. Although there is no provision under the directive which allows defensive trademarks to be transposed into domestic law, the intentions behind registration of a trademark are irrelevant for the purposes of interpreting Article 10 on genuine use.

This decision offers some comfort for brand owners who have updated their portfolio of trademarks. Provided that they are using a mark which does not substantially alter the distinctive character of the registered mark, this will be sufficient to demonstrate use, even where that trademark is separately registered. 

This case serves as another reminder for brand owners to ensure that they keep accurate records of use of their trademarks, and also to consider refilling where trademarks are being used in a way that alters the distinctive character of their marks, or where they are vulnerable to cancellation on the basis of non-use.

The decision may also open the door to the registration of close variations of a mark for defensive purposes, since such registrations may now be supportable by use of the primary mark. However, it will remain to be seen whether such registrations will fall foul of bad-faith provisions or be invalid for lack of an intention to use in those member states where such an intention is required.

Georgina Harris, Field Fisher Waterhouse LLP, London