ECJ: genuine use requirements under Article 42(3) apply to international trademarks

In Rivella International AG v Office for Harmonisation in the Internal Market (OHIM) (Case C-445/12 P, December 12 2013), the Court of Justice of the European Union (ECJ) has confirmed that international trademarks that have effect in the European Union are subject to the genuine use requirements under Article 42(2) and (3) of the Community Trademark Regulation (207/2009). The ECJ also ruled that the General Court had been correct in holding that use of a Community trademark (CTM) in the European Union was exhaustively and exclusively governed by EU law. The decision emphasises the importance of establishing use in the relevant territory before basing a trademark opposition on that mark.

Key law: 

• Article 8(2)(a) of the regulation: an "earlier trademark" (upon which an opposition may be based under Article 8(1)) is one that was applied for before the opposed CTM application. Where appropriate this should take account of priorities for the following marks:
  • CTMs;
  • marks registered in a member state or in the Benelux region;
  • international trademarks effective in a member state; or
  • international trademarks effective in the Community.
• Article 42 of the regulation:
  • Article 42(2): a trademark opposition will be rejected if, at the applicant's request, the opponent is unable to prove that the earlier trademark was genuinely used during the five years preceding publication of the CTM application. Proof of use does not need to be provided where the earlier mark has been registered less than five years or where there are proper reasons for non-use.
  • Article 42(3): Paragraph 2 applies to earlier national trademarks referred to in Article 8(2)(a) by substituting use in the member state where the earlier mark is protected for use in the European Union.
• Article 4(1) of the Madrid Agreement and Article 4(1)(a) of the Madrid Protocol: a trademark registered through the system should be treated the same as if it had been filed directly at the relevant national or supranational trademark office.
• Article 5(1) of the Convention between Switzerland and Germany on the reciprocal protection of patents, designs and trademarks (1892): the convention states that, by virtue of the reciprocal protection of patents, trademarks and designs, use of a trademark in Switzerland is equivalent to its use in Germany and vice versa.

The background to the case is as follows. Baskaya di Baskaya Alim e C Sas filed an application for the figurative CTM BASKAYA under Classes 29, 30 and 32 of the Nice Classification with the CTM registry. The application covered a range of food and drinks including coffee, tea, beers and non-alcoholic drinks. Rivella International AG opposed the application on the basis of its earlier international figurative mark PASSALA (registered on June 30 1992 under No 470542), registered in Class 32 in countries including Germany, Spain, France, Italy, Austria and the Benelux. Rivella's mark covered "beer, ale and porter; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages".

Rivella's opposition was rejected by OHIM, on the basis that genuine use of the mark could not be shown in the EU member states in which its mark was registered. To oppose an application of a CTM based on an earlier registration, the holder of the earlier mark has to prove genuine use in the Community during the five preceding years. Rivella attempted to rely on the 1892 bilateral convention between Switzerland and Germany to show that use of the mark in Switzerland – not a EU member state – constituted genuine use in Germany. Rejecting Rivella's appeal, the General Court held that genuine use had to be established in the European Union or in the member state concerned – the bilateral convention did not bind the European Union (Rivella v OHIM (Case T-170/11)).

Before the ECJ, Rivella claimed that Articles 42(2) and (3) of the regulation do not apply to international trademarks since Articles 42(2) applies to CTMs and Article 42(3) applies to national trademarks. Accordingly, the General Court had been wrong to require it to provide proof of use of its mark in Germany.

The ECJ ruled that, under Article 4(1) of the Madrid Agreement and Article 4(1)(a) of the Madrid Protocol, international marks should be treated as if they had been filed directly with the relevant national trademark offices. By virtue of these provisions, the ECJ confirmed that international trademarks as referred to in Article 8(2)(a)(iii) of the regulation are subject to the same system as national trademarks and, accordingly, Article 42(3) did apply to international trademarks.

Rivella also submitted that, contrary to the findings of the General Court, the question of the "territorial validity" of a nationally-registered mark was exclusively governed by national law. That was particularly the case for national marks that had been registered under international arrangements and had effect in a member state.

The ECJ ruled that the CTM system is autonomous and should be applied independently of any national system. The General Court was right in finding that use of a CTM in the European Union was exhaustively and exclusively governed by EU law. 

Further, Rivella claimed that the fact that use of BASKAYA might be prohibited in Germany by virtue of the 1892 convention could affect the unitary character of the CTM.

The ECJ ruled that the unitary character of a CTM is not absolute. The regulation sets out a number of exceptions, in particular at Article 111(1), which allows the proprietor of an earlier right that only applies to a particular locality to oppose use of a CTM in their protected territory.

The ECJ therefore dismissed Rivella's appeal. The case highlights the importance of ensuring that a trademark is robust before using it as the basis of an opposition. Being able to establish use in the relevant territory is vital. This decision also confirms that, where a CTM is concerned, such use must have occurred in the European Union – irrespective of contrary provisions in local law.

Mark Lubbock and Alison Thomson, Ashurst LLP, London