Genuine use of EU trademark: the case Levi Strauss

Article 18, 1) of the EU trademark Regulation n. 2017/1001 provides that:

“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”.

Among the sanctions provided for in the Regulation there is the possibility the rights of the proprietor of the EU trademark shall be declared to be revoked for non-use.

How genuine use of a trademark is valued in EU

The Court of Justice had had the opportunity to give its interpretation of the meaning to be given to the wording “genuine use in the EU” (judgement 149/11, December 19, 2012)

The firs interpretation has been made “in negative”: that is, the use of EU trademark in third countries (non E.U. States) should not be taken into account.

Secondly, it is not possible to determine beforehand and in the abstract the territorial extension suitable to establish “genuine use of the mark”, therefore it is necessary not to consider territorial dimension of the member States.

The Court of Justice states that:

“When assessing whether use of the trademark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether there is a real commercial exploitation of the mark in the course of trade, particularly the usages regarded as warranted in the economic sector concerned as a means of maintaining or creating market share for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark”.

In this judgement, the Court finally states that:

“Article 15 (1) of Regulation No 207/2009 of 26 February 2009 (now article 18, 1 of the EU Trademark Regulation n. 2017/1001) on the community trademark (now, EU trademark) must be interpreted as meaning that the territorial borders of the Member States should be disregarded in the assessment of whether a trademark has been put to genuine use in the Community (now European Union) within the meaning of the provision” and that: “ a Community trademark (now, EU trademark) is put to genuine use when it is used in accordance with its essential function and for the purpose of maintaining or creating market share within European Community (now, European Union) for the goods or services covered by it.”

Graphic variations in the use of eu trademark

Article 18, paragraph 1, letter a) of the European Union Trademark Regulation provides that constitute use

“the use of the EU trademark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trademark in the form as used is also registered in the name of the proprietor”.

The Court of First Instance (28/02/2017, case T-767/15) highlights that:

“The purpose of that provision, which avoids imposing strict conformity between the used form of the trademark and the form in which the mark is registered, 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 better adapted to the marketing and promotion requirements of the goods or services concerned…In such situations, where the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trademark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade”.

The point is: how is it possible to understand whether the variations do not alter the distinctive character and are, as such, acceptable in order to demonstrate the use of the mark?

In the judgment T-767/15 (point 21) it is stated that:

“The exam of the alteration of the distinctive character of the registered trademark requires an examination of the added distinctive and dominant elements according to the intrinsic qualities of each of these elements, as well as an examination of the position of the various elements in the configuration of the brand”.

The evaluation, therefore, must be done on a case by case basis by verifying the above-mentioned elements.

Genuine use of a trademark: the case Levi Strauss

The European Court of Justice, in judgement 18 April 2013, C-12/12, stated that it may considered genuine use also the use of a trademark which has been carried out not only through the complex trademark or in combination with another mark.

The judgement of the European Court of Justice was born from the following question: Levi Strauss is the proprietor of several trademarks and, in particular, of EU trademark registration (number 2292373) which consists of a rectangular red label made of textile.

Levi Strauss accused “Collosseum holding AG” of infringement of its EU trademark registration and “Colosseum Holding AG” raised a defense based on the ground of inadequate use of the EU trademark owned by Levi strauss. In detail, “Colosseum Holding AG” pointed out that UE trademark 2292373 has not been used alone but only as a part of a composite mark – registered by Levi Strauss and consisting of another trademark, which contains the word element “LEVI’S” in a red rectangular element at the left upper edge of a pocket.

The central point was, therefore, to determine whether the use of the mark exclusively used as a part of a composite mark could be considered sufficient under article 15, paragraph 1 of the Community Regulation on Community Trademark (now article 18, paragraph 1) of the European Union Trademark Regulation).

The Court of Justice gave an affirmative answer and ruled that:

“The condition of genuine use of a trade mark, within the meaning of Article 15(1) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, may be satisfied where a registered trade mark, which has become distinctive as a result of the use of another composite mark of which it constitutes one of the elements, is used only through that other composite mark, or where it is used only in conjunction with another mark, and the combination of those two marks is, furthermore, itself registered as a trade mark”.