Federal Supreme Court refers questions on genuine use to ECJ


In two separate cases, the German Federal Supreme Court (BGH) has referred several questions on genuine use to the Court of Justice of the European Union (ECJ) for a preliminary ruling. The outcome of these cases will be highly relevant for trademark owners and their legal advisors.

In the PROTI case, the plaintiff owned three registrations for PROTI, PROTIPLUS and PROTI POWER and device. It used various versions such as PROTI POWER, PROTIPLEX, PROTI 4-K, PROTI POWER and device, PROTIPLUS and PROTI PLUS 80.

The defendant registered and used PROTIFIT for identical and similar goods, and challenged the use of the plaintiff's marks. Following new German practice, the plaintiff had to specify the order of its claims, and primarily based its action on the word mark PROTI. The Civil Court and the Court of Appeals in Cologne both found that the plaintiff had not made genuine use of the PROTI mark by using its various versions, holding that:

  • these versions were also registered by the plaintiff; and
  • under the ECJ's September 13 2007 decision in Il Ponte Finanziaria SpA v OHIM (Case C-234/06 P, also known as BAINBRIDGE), the PROTI mark had not been put to genuine use.

The plaintiff appealed to the BGH. As it is disputed in German practice whether BAINBRIDGE is in point here, on August 17 2011 the BGH referred some rather complicated questions to the ECJ for a preliminary ruling.

Article 10(1) of the First Trademarks Directive (89/104/EEC) (now the Trademarks Directive (2008/95/EC)) requires that a trademark be put to genuine use in a member state of the European Union within a period of five years following the date of the completion of the registration proceedings. Article 10(2)(a) provides that use of the trademark in a form differing in elements which do not alter the distinctive character of the mark as registered still constitutes genuine use. When Article 10(2)(a) was implemented into national law, the German legislator included an additional sentence according to which Article 10(2)(a) should apply when the used version of the mark is also registered as a trademark (Paragraph 26(3)(2) of the German Trademark Act); the German government explained that this amounted only to a clarification of Article 10(2)(a).

However, in BAINBRIDGE the ECJ stated in Note 86 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 question in the present case (and the first question referred by the BGH to the ECJ) was thus whether Paragraph 26(3)(2) of the German Trademark Act contradicts Article 10(2)(a) of the directive. This was the opinion of the Court of Appeals in Cologne, which, consequently, did not apply Paragraph 26(3)(2) and found that there was no genuine use of PROTI, as the version actually used by the plaintiff was also registered.

In contrast, the BGH apparently agrees with the vast majority of other courts and authors that Paragraph 26(3)(2) does not contradict the directive. The BGH provided the following arguments to support its opinion:

  • Article 5(C)(2) of the Paris Convention and Article 10(2)(a) of the directive do not refer to circumstances where the version of the trademark as used is also registered. Hence, the wording of these provisions leaves the issue open.
  • The purpose of the 'use' requirement is to reduce the number of irrelevant registrations and, therefore, to reduce the number of conflicts. Nevertheless, the BGH acknowledged that trademark owners may wish to develop and modernise their registrations to respond to changes in consumers' taste, which could result in a modification of the registered version. The usual advice is then to register the modernised version of the mark, in case the new version alters the distinctive character of the old version. Trademark owners may thus obtain registrations for slightly different versions of the original mark: the BGH referred to various examples, including the shell design of a well-known oil company and the pelican logo of a German writing instrument company, which have both changed over the decades. The BGH believed that trademark owners should be allowed to maintain both the old registration with its priority date and the new modernised registration, as long as the distinctive character of the mark is not altered; otherwise, the value of well-established brands would be destroyed. According to the BGH, the purpose of the 'use' requirement is not to cancel priority dates or destroy the value of trademarks.
  • The BGH also recognised that trademark owners might want to develop a family of marks containing one common element. Therefore, according to the BGH, trademark owners should be allowed to register the new version of the mark as used, and use of this new version should constitute use of the old mark, as long as the distinctive character of the mark is not altered. Consequently, the new version as used would support two or more registrations at the same time.

With its first question, the BGH sought to know whether the ECJ agreed with this assessment, which would allow the application of Paragraph 26(3)(2) of the German Trademark Act.

This issue has a highly practical impact, as trademark owners tend to change the design of their trademarks from time to time. There is always a risk that a court could take the view, many years later, that the distinctive character of the mark has been altered and that use of the new version does not constitute genuine use of the registered mark, so it seems that the safest course of action is to register the new version as well. If BAINBRIDGE must be understood as meaning that it is not possible to own two registrations but use only one version, this practical approach should be reconsidered, or trademark owners would run the risk of losing valuable priority dates. Hence, it is hoped that the ECJ will follow the view of the BGH.

In its second question, the BGH seemed to limit its own approach. It stated that, if a new registration serves only defensive purposes in order to secure or even extend the scope of protection of a registered mark, this could contradict Article 10(2)(a) of the directive. The BGH sought to ascertain the ECJ's approach in this respect.

In the Levi Strauss Flag Design II case - a slightly different, but related, case - on November 24 2011 the BGH referred more questions to the ECJ for a preliminary ruling. Plaintiff Levi Strauss owns several word and device marks, device-only marks and position marks for the 'red flag design' on the back pocket of its jeans. Some of these marks have acquired distinctiveness. As in the PROTI case, the defendant questioned whether some of the plaintiff's registrations had been put to genuine use. The question was again whether the use of a slightly different version, showing a red flag on the back pocket of a pair of jeans, could constitute genuine use of various registrations of the plaintiff, or whether this would not be allowed under the directive or the Community Trademark Regulation (207/2009). However, in this case, an additional factor to take into account was that some of the marks have acquired distinctiveness. The Federal Supreme Court again stated that this should constitute genuine use of the various registrations, and sought to ascertain whether BAINBRIDGE would be in conflict with this holding.

It remains to be seen whether the ECJ will join the cases, or at least issue its decision in both cases on the same day, as the legal questions involved are related.

Carsten Albrecht, FPS Rechtsanwälte & Notare, Hamburg

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