Position Paper regarding Case C-12/12 Colloseum Holding AG v. Levi Strauss & Co. ( Stofffähnchen )

Transcription

1 Position Paper regarding Case C-12/12 Colloseum Holding AG v. Levi Strauss & Co. ( Stofffähnchen ) About AIPPI The Association Internationale Pour la Protection de la Propriété Intellectuelle ( AIPPI ) is the world's leading international organization, founded in 1897, dedicated to the development and improvement of intellectual property protection. AIPPI is a politically neutral, non-profit organization, domiciled in Switzerland which currently has over 9000 Members representing more than 100 countries. The members of AIPPI include intellectual property lawyers, patent and trade mark attorneys and patent and trade mark agents in corporate and private practice throughout the world, as well as academics and other persons interested in intellectual property. The objective of AIPPI is to improve and promote the protection of intellectual property at both an international and national basis. It pursues this objective by working for the development, expansion and improvement of international and regional treaties and agreements and also of national laws relating to intellectual property. AIPPI operates by conducting studies of existing national laws and proposes measures to achieve harmonisation of these laws on an international basis. In its long history, AIPPI has adopted more than 700 Resolutions and Reports. An AIPPI Resolution is a statement of policy regarding a specific intellectual property issue, approved by the collective country delegates of AIPPI. Such a Resolution is only issued after lengthy study and discussion and subsequent vote by a majority of delegates present at an Annual Meeting of the Executive Committee of AIPPI. AIPPI has recently adopted a Resolution on issues relevant to Case C-12/12: Resolution Q218 The requirement of genuine use of trade marks for maintaining protection (Annex), which was finalised at the Executive Committee Meeting in Hyderabad, India, in October 2011, and will be discussed below. 1

2 The Issue The German Federal Supreme Court, by Order of 24 November 2011, Case I ZR 206/10 Stofffähnchen referred the following questions to the Court of Justice of the European Union ( CJ ) for a preliminary ruling: Is Article 15(1) of Regulation (EC) No 40/94 to be interpreted as meaning that: 1. a trade mark which is part of a composite mark and has become distinctive only as a result of the use of the composite mark can be used in such a way as to preserve the rights attached to it if the composite mark alone is used? 2. a trade mark is being used in such a way as to preserve the rights attached to it if it is used only together with another mark, the public sees independent signs in the two marks and, in addition, both marks are registered together as a trade mark? The case is currently pending before the CJ as Case C-12/12, Colloseum Holding AG v. Levi Strauss & Co. The position of AIPPI on these questions is as follows: Summary of AIPPI s position In order to maintain and enforce rights in a registered trade mark it is, as a matter of principle, necessary that the mark must be genuinely used as registered. Considering the facts of the above case as further discussed below and in view of its recent Resolution Q218 The requirement of genuine use of trade marks for maintaining protection AIPPI concludes: that a mark is also used as registered in cases where the mark is used together with one or more other marks as long as the relevant public recognises the individual marks as distinct marks. And that under such circumstances: use of the mark as registered should also be recognised if the mark as used (i.e. together with another distinct mark) is itself separately registered; use of a mark together with a word element must be considered as use of the mark without the word element when the relevant public perceives the mark as registered (i.e. without word element) as a distinct mark; such perception as a distinct mark should be assumed when this specific mark has been registered on the basis of distinctiveness acquired through use (secondary 2

3 meaning) made by the registered mark together with one or more additional distinct marks. In the light of the above AIPPI concludes with regard to the concrete case and circumstances at hand: that the attribution of the use of the red flag together with the designation LEVI S (thus use of a mark together with another mark) must be taken to amount to the use of the Red Flag-Mark as such, if the public perceives the two marks concerned as separate and distinct signs; that such perception as separate and distinct signs must be assumed in the present case in view of the fact that the Red Flag-Mark has been registered on the basis of acquired distinctiveness together with the word element LEVI S, irrespective of the fact that the red flag together with the designation LEVI S is also registered as a separate (combined) trade mark. Applicable law Article 15 of Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community trade mark (the successor to Council Regulation (EC) No. 40/94 of 20 December 1993) (Community Trade Mark Regulation CTMR) provides as follows: Article 15 Use of Community trade marks 1. If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community 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 Community 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: (a) use of the Community 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; Article 15 CTMR corresponds to Article 10 of Directive 2008/95 of the European Parliament and the Council of 22 October 2008 on the approximation of the laws of the Member States relating to trade marks (the successor to the First Council Directive 89/104/EEC of 21 December 1988). Article 5C of the Paris Convention for the Protection of Industrial Property, provides, to the extent relevant in the present context, as follows: 3

4 Article 5 C.- (1) If, in any country, use of the registered mark is compulsory, the registration may be cancelled only after a reasonable period, and then only if the person concerned does not justify his inaction. (2) Use of a trade mark by the proprietor in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered in one of the countries of the Union shall not entail invalidation of the registration and shall not diminish the protection granted to the mark. Article 2 of the Agreement on trade-related aspects of intellectual property rights (TRIPS Agreement) provides as follows: Article 2 Intellectual Property Conventions 1. In respect of Parts II, III and IV of this Agreement, Members shall comply with Articles 1 through 12, and Article 19, of the Paris Convention (1967). 2. Nothing in Parts I to IV of this Agreement shall derogate from existing obligations that Members may have to each other under the Paris Convention, the Berne Convention, the Rome Convention and the Treaty on Intellectual Property in Respect of Integrated Circuits. The facts The questions referred arise in a case pending on appeal before the German Supreme Court between Levi Strauss & Co. and a defendant not identified in the Order concerning the getup of jeans having red textile flags in the seams of their back pockets. The claimant is proprietor of a number of German national and Community trade marks with the red flag in the seam as a common element. The claimant relies primarily on Community trade mark No , registered since 10 February 2005, and which is represented as follows: 4

5 The registration contains a disclaimer for form and colour of the pocket. The mark was registered on the basis of acquired distinctiveness (Article 7 (3) CTMR). The claimant considers the get-up of the defendant s jeans to amount to an infringement of its rights. The get-up is described in the Order as follows: Get-up consisting of a red rectangular cloth flag in the upper third of the right seam of a back pocket bearing the respective marks or the designation SM Jeans. The German Supreme Court considers the defendant s get-up to amount to an infringement of the claimant s Community trade mark. Since this mark was registered more than five years ago, the infringement depends on whether the mark has been genuinely used within the meaning of Article 15 CTMR. The Appeal Court assumed that the mark has been used in the following form, which is separately registered as a German national mark: This mark differs from the Community trade mark in that the flag bears the designation LEVI S. 5

6 The German Supreme Court considers that it is necessary to have an answer to the question whether a registered mark (the Community trade mark) can be taken to have been genuinely used when it is an element of another mark (the German national mark) and has been registered as a Community trade mark on the basis of acquired distinctiveness through use made by the mark registered as German mark. The German court presents comprehensive arguments why use of the claimant s mark should be confirmed. The German Supreme Court also makes reference to an earlier Order (17 August 2011) with which another series of questions dealing with genuine use were referred to the CJ. That case is pending before the CJ as Case C-533/11. The present case differs from the earlier case in that the issue here is whether a mark can be taken to have been used as registered when it was used in combination with another mark, and the combination is separately registered, whereas in the first case the issue is whether a mark can be taken as used when a variant not affecting the distinctive character is used and the variant is also registered. The first question The first question referred is as follows: Is Article 15(1) of Regulation (EC) No 40/94 to be interpreted as meaning that: 1. a trade mark which is part of a composite mark and has become distinctive only as a result of the use of the composite mark can be used in such a way as to preserve the rights attached to it if the composite mark alone is used? According to the wording of Article 15 CTMR a mark registered as a Community trade mark must be used as registered, i.e. in the form as registered. Variations from the form as registered are accepted if the mark as used differs from the mark as registered only in elements not affecting its distinctive character. Whether a variation is an acceptable variation or not is not relevant when the mark is actually used in the form in which it is registered. In the present case the mark as used differs from the mark as registered in that the mark as used displays, in addition to the red flag, also the designation LEVI S. In addition, the mark was registered on the basis of acquired distinctiveness through use and that use was the red flag with the designation LEVI S. The answer whether there was genuine use thus depends on the question of whether the mark was used as registered (i.e. only the red flag). If the use together with the word element were the use that counts, this, in the view of the German court, would amount to a variation not within the scope of acceptable variations. In cases of trade marks consisting of colours or three-dimensional shapes of products or their packaging it corresponds to market realities that these marks are invariably used 6

7 together with labels or device elements. The same applies with regard to word marks which are frequently used together with additional word marks or device elements. In these situations it corresponds to market realities that a registered mark is taken to be used in the form in which it was registered even if the colour mark or shape mark or word mark is used together with other elements. This requires however that the relevant public to which the mark or marks are addressed actually recognises the marks as distinct marks and not as a single unitary mark. The CJ has recognised this in a number of situations. Thus, it appears that there exists wellestablished case law on this issue. This applies for registration proceedings, when the issue is whether a mark is inherently distinctive. In the recent Freixenet decision of 20 October 2011 (Joined Cases C-344 & 345/10 P) the CJ held that the General Court had committed an error of law when refusing to take into account the appearance of the product (external appearance of Cava bottles) as such. The following statements are relevant: 49 Although the General Court correctly identified, at paragraphs 63 to 67 and 62 to 66 of the judgments in T-109/08 and T-110/08 respectively, the criteria laid down by the case-law, it is apparent from those judgments that the General Court did not follow that case-law in its assessment of the case. 50 Instead of establishing whether the marks for which registration was sought varied significantly from the norm or customs of the sector, the General Court merely stated in a general manner, at paragraphs 79 and 78 of the judgments in T-109/08 and T-110/08 respectively, that since no bottle had been sold without a label or an equivalent, only that word element could determine the origin of the sparkling wine in question, so that the colour and matting of the glass of the bottle could not function as a trade mark for sparkling wine for the relevant public when they were not used in combination with a word element. 51 Such an assessment means that marks consisting of the appearance of the packaging of the product itself that do not contain an inscription or a word element would be excluded automatically from the protection that may be conferred by Regulation No 40/ It follows that the General Court infringed Article 7(1)(b) of Regulation No 40/94 (see, to that effect, Case C-383/99 P Procter & Gamble v OHIM [2001] ECR I-6251, paragraph 45). The same principle is recognised in registration proceedings in a case with striking similarities with the present case when a mark is to be registered on the basis of acquired distinctiveness but the use has been made always together with another (word) element. The CJ, in its judgment of 7 July 2005, Case C-353/03, Nestlé v. Mars, recognised that the 7

8 element Have a Break could be recognised as a separate trade mark even if used together with Have a KitKat. The headnote of that decision reads as follows: The distinctive character of a mark referred to in Article 3(3) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks may be acquired in consequence of the use of that mark as part of or in conjunction with a registered trade mark. The CJ has applied the principle first announced in the Nestlé v. Mars decision also in conflict cases where the issue was whether a mark can be held to have a particular degree of distinctiveness as a result of the use of a different mark which forms part of the mark asserted in an opposition proceeding before OHIM. In its judgment of 17 July 2008 in Case C-488/06 P, L & D Sämann (ARBRE MAGIQUE), the CJ concluded as follows: 49 As the Court of First Instance recalled in paragraph 73 of the judgment under appeal, the Court of Justice has already held that the acquisition of the distinctive character of a mark may also be as a result of its use as part of another registered trade mark. It is sufficient that, in consequence of such use, the relevant class of persons actually perceives the product or service, designated by the mark, as originating from a given undertaking (see, to that effect, Nestlé, paragraphs 30 and 32). 50 Although the facts in Nestlé differed from those in the present case, that does not necessarily mean, contrary to what L & D submits, that that finding of general application does not apply also to a factual and procedural context such as that at issue in the present case. 51 In particular, the fact that Nestlé concerned the acquisition of distinctive character by a mark which it was sought to register, whereas the present case concerns establishing whether an earlier mark has a particularly distinctive character in order to ascertain whether there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, does not, as the Advocate General pointed out in point 51 of her Opinion, justify any difference of approach. 52 The Court of First Instance was, consequently, justified in observing in paragraph 75 of the judgment under appeal that, if mark No could be regarded as part of the ARBRE MAGIQUE mark, it was possible to establish the particularly distinctive character of the former on the basis of evidence relating to the use and well-known nature of the latter. Similarly, in infringement cases, the CJ has recognised that one element of a composite designation may have an independently distinctive character (judgment of 6 October 2005, Case C-120/04, Medion v. Thomson LIFE / Thomson Life ). 8

9 As regards use, the General Court of the European Union has recognised that a mark is used as registered even if it appears on products together with other signs or marks. In the judgment of 8 December 2005 in Case T-29/04, Castellblanch ( Cristal ), the following is stated: 33 In the contested decision the Board of Appeal found that there is no precept in the Community trade mark system that obliges the opponent to prove the use of his earlier mark on its own, independently of any other mark. According to the Board of Appeal, the case could arise where two or more trade marks are used jointly and autonomously, with or without the name of the manufacturer s company, as is the case particularly in the context of the automobile and wine industries. 34 That approach must be followed. The situation is not that the intervener s mark is used under a form different to the one under which it was registered, but that several signs are used simultaneously without altering the distinctive character of the registered sign. As OHIM rightly pointed out, in the context of the labelling of wine products joint affixing of separate marks or indications on the same product, in particular the name of the winery and the name of the product, is a common commercial practice. 35 In the present case the mark CRISTAL appears clearly four times on the neck of the bottle marketed by the intervener and twice on the main label, accompanied by the symbol. On the neck that mark is separate from the other elements. In addition, the mark CRISTAL appears alone on the boxes in which bottles of the mark CRISTAL are marketed. Equally, on the invoices produced by the intervener reference is made to the term cristal with the mention 1990 coffret. It should be noted that the mark CRISTAL thus identifies the product marketed by the intervener. 36 As regards the mention Louis Roederer on the main label, it merely indicates the name of the manufacturer s company, which may provide a direct link between one or more product lines and a specific undertaking. The same reasoning applies to the group of letters lr which represents the initials of the intervener s name. As pointed out by OHIM, joint use of those elements on the same bottle does not undermine the function of the mark CRISTAL as a means of identifying the products at issue. 37 Furthermore, OHIM s finding that the use of the word mark together with the geographical indication Champagne cannot be considered to be an addition capable of altering the distinctive character of the trade mark when used for champagne must be endorsed. In the wine sector the consumer is often particularly interested in the precise geographical origin of the product and the identity of the wine producer, since the reputation of such products often depends on whether the wine is produced in a certain geographical region by a certain winery. 38 In those circumstances it must be held that the use of the word mark CRISTAL together with other indications is irrelevant and that the Board of Appeal did not 9

10 infringe Article 15(2)(a) of Regulation No 40/94, Article 43(2) and (3) thereof, or Rule 22(2) of the implementing regulation. The judgment was confirmed by the CJ by Order of 24 April 2007, Case C-131/06 P, without these conclusions being put into doubt. It thus appears that the case law recognises the use of a plurality of separate marks. It is of course necessary that the relevant public recognises the individual marks as distinct marks. In the present case there is the additional circumstance that the red flag was registered on the basis of acquired distinctiveness, with actual use having been made together with the designation LEVI S. Thus, with the office having recognised use of the red flag itself even if used on the market with a word element there is no reason to assume in the present case that the relevant public would not recognise the red flag as a distinct mark. The second question The second question referred is as follows: Is Article 15(1) of Regulation (EC) No 40/94 to be interpreted as meaning that: ( ) 2. a trade mark is being used in such a way as to preserve the rights attached to it if it is used only together with another mark, the public sees independent signs in the two marks and, in addition, both marks are registered together as a trade mark? As explained earlier, it corresponds to market realities that trade marks often consist of several elements each of which are in fact separate marks, such as colour or shape, or when several word marks are used together. Frequently, the overall get-up of a product is registered, as well as the individual elements. It corresponds to best practice in advising brand owners to obtain a registration for each of these variations. This is so because it is seen as too risky to rely on the courts to provide protection for a registered mark as being only slightly different from the mark as used. When multiple independent marks are involved, brand owners will generally register both the individual element and the combination. The comparison of the mark as registered with the mark as used and the conclusion that the individual distinct mark is taken to be used as registered does not change when the variant or the combination is also separately registered. A trade mark proprietor would in fact be at a loss to understand why an acceptable variation is no longer an acceptable variation when also registered as a separate mark. The wording of Article 15 CTMR does not allow any other conclusion but that a comparison of the mark as registered with the mark as used is required in each case. Excluding 10

11 recognition of use merely on the ground that the mark as used is also registered would not be acceptable under the wording of the provision. The purpose of the use requirement also does not lead to a different conclusion. The use requirement serves to prevent the enforcement (and validity) of marks which are not genuinely used (after the expiry of the grace period ). In view of market realities it has long since been recognised that often the mark is used not exactly as registered such use should nevertheless be accepted if the variation does not alter the distinctive character. That analysis is not affected one way or the other by the fact that the variation as used is also registered separately. The same applies in cases of multiple marks, as here. The doubts raised in this regard by the German Federal Supreme Court are founded on the decision of the CJ of 13 December 2007 in Case C-234/06 P, BAINBRIDGE. A close reading of that decision reveals that these doubts are not really justified. The decision reviewed by the CJ judgment of the General Court of 23 February 2006, Case T-194/03 did indeed consider the registration of the variant as a ground not to recognise the use of another registered mark (emphasis added): 50 Article 15(2)(a) of Regulation No 40/94, to which the applicant refers, relates to a situation where a national or Community registered trade mark is used in trade in a form slightly different from the form in which registration was effected. The purpose of that provision, which avoids imposing strict conformity between the used form of the trade mark and the form in which the mark was 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 be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. 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 trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade. However, Article 15(2)(a) does not allow the proprietor of a registered trade mark to avoid his obligation to use that mark by relying in his favour on the use of a similar mark covered by a separate registration. The CJ however took an entirely different approach (emphasis added): 86 In any event, while it is possible, as a result of the provisions referred to in paragraphs 81 and 82 of the present judgment, to consider a registered trade mark as used where proof is provided of use of that mark in a slightly different form from that in which it was registered, it is not possible to extend, by means of proof of use, the protection enjoyed by a registered trade mark to another registered mark, the use of 11

12 which has not been established, on the ground that the latter is merely a slight variation on the former. The CJ thus excludes as irrelevant a comparison of one registered mark with another registered mark: use of a variant cannot be attributed to a registered mark solely on the ground that the registered mark is similar to another registered mark. This means that the comparison must be made between the mark as used and the mark as registered. An interpretation of the Community Trade Mark Regulation which would exclude an attribution of use if the mark as used was also separately registered would not only be against the wording and the purpose of Article 15 CTMR, but would also be against international agreements entered into by the European Union. Article 15 CTMR in the part relevant here is taken verbatim from Article 5 C of the Paris Convention, which not only binds all the Member States of the European Union, but also the European Union itself, via Article 2 of the TRIPS Agreement. Neither the wording nor the legislative history of Article 5 C of the Paris Convention allow the conclusion that the attribution of use of a variant of the mark as registered may be excluded when the variant is itself separately registered. This is equally supported by Resolution Q218 The requirement of genuine use of trade marks for maintaining protection which was adopted almost unanimously at the Executive Committee Meeting of AIPPI in October 2011 in Hyderabad, India. Resolution Q218 (Annex) contains among several other points the following paragraph (emphasis added): 3) Use of variations The use of a mark which differs from the registered mark must be recognized as sufficient use of the registered mark if the differences between the used and the registered mark do not alter the distinctive character of the mark. The evaluation of whether or not the differences alter the distinctive character will depend on a case by case analysis. Where the proprietor has registrations for a number of similar marks, and is using a variation mark, the maintenance of rights in each of the registered marks must be evaluated by comparing each to the variation mark that is in use, regardless of whether the variation itself is also registered. It is therefore recognised on a world-wide level that an attribution of use may not be refused on the ground that the variant used is also separately registered. In conclusion, the attribution of the use of the red flag together with the designation LEVI S, i.e. use of a mark together with another mark, must be taken to amount to the use of the red flag as such, if the public sees separate and distinct signs in the two marks. In view of the fact that the red flag mark has been registered on the basis of distinctiveness acquired through use together with the word element LEVI S this must be taken to be the case here, 12

13 irrespective of the fact that the red flag together with the designation LEVI S is also registered as a trade mark. Conclusions The use of a registered mark as part of a composite mark or together with another mark (in the case at hand a word element) must be considered as use of the registered mark (thus without the word element) when the relevant public perceives this mark as a distinct and independent mark. Use of such a mark as registered must be affirmed even if the composite mark, or the combination of the two marks together, is also separately registered. April 19, 2012 Yoon Bae Kim Thierry Calame Alexander von Mühlendahl President of AIPPI Reporter General of AIPPI Co-Chair of Trade marks Committee Q212 Annex 13