GENUINE USE OF THE COLLECTIVE TRADEMARK: A NEW IMPORTANT JUDGEMENT OF THE COURT OF JUSTICE OF THE EUROPEAN UNION
With its judgment of December12, 2019, rendered at the end of the case C-143/19 (available at the following link http://curia.europa.eu/juris/document/document.jsf?text=&docid=221511&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=7995923), the Court of Justice of the European Union (“CJEU”) clarified that a collective mark, shown on the packaging of products marketed by the companies affiliated to the association holder of the mark, can be considered as “genuinely used” in the territory of the European Union even with reference to the specific products contained in the packaging, not bearing the aforementioned collective mark.
On June 12, 1996, the German company DGP GmbH filed with EUIPO an application for the registration of the figurative sign “representation of a circle with two arrows” as a collective mark for goods in Classes 1-34 and services in Classes 35, 39, 40 and 42 of Nice Classification. According to the regulations governing use filed with the trademark application pursuant to under art. 67 of EU Regulation no. 207/2009 (now replaced by Article 75 of Regulation (EC) No 1001/2017), the trademark in question was registered “in order to enable consumers and traders to recognise packaging which is part of the DGP recycling system and for which a contribution to the financing of the system has been established, as well as goods packaged in this way, and to distinguish them from other packaging and goods”.
Following the registration of the mark, on November 2, 2012 a Slovak company applied for the partial revocation for non-use of the collective mark. By decision of May 26, 2015, the EUIPO’s Cancellation Division granted the application and declared the collective mark revoked in respect of all the goods for which it was registered, with the sole exception of goods consisting of packaging.
The revocation was upheld by the Board of Appeal of EUIPO, first, and by the General Court of the European Union, second. The latter, in particular, by judgment of September 12, 2018 (case T-253/17), stated that in the present case the collective mark holder had proved the sign’s genuine use only in relation to the packaging of the goods, and not also to the goods themselves. It added that the trademark in question would have only indicated that the packaging on which the sign was imprinted could be collected and enhanced in accordance with a specific recycling system, but this would have not guaranteed any indication of origin in relation to the individual goods. For that reason, the collective mark was declared partially revoked. The General Court therefore concluded that the EUIPO’s decision declaring DGP’s collective mark to be revoked was free from any objections on that point.
With the judgment in question, the CJEU overturned the previous rulings and annulled the judgments of both the EU General Court and EUIPO’s Board of Appeal.
The Court’s reasoning starts from the assumption that the principle of law according to which a European Union trademark is genuinely used “when used in accordance with its essential function, in order to create or preserve an outlet for the goods and services for which it is registered” also applies unquestionably to collective trademarks, the essential function of which is – as known, unlike individual trademarks – to distinguish the goods and services of the subjects affiliated to the association which owns the mark from those of other undertakings.
On the basis of this premise, the EU judges objected the judgment of the EU General Court in so far as it merely found that DGP had failed to prove that the trademark in question was also intended to create or preserve an outlet for the goods at issue (and not only for packaging containing the goods), without first examining whether the mark was “actually” used on the market for the goods or services concerned. According to the Court, that assessment should have been carried out by taking in particular consideration the uses considered justified, in the economic field concerned, to maintain or create an outlet for the goods or services covered by the mark, the nature of those goods and services, the characteristics of the relevant market, the extent and frequency of use of the mark.
In the present case, therefore, the General Court should not have ended its judgment on the fact (considered clear) that the consumer, looking at the collective mark in question, would have understood that DGP’s system concerned the local collection and recovery of the packaging of the goods and not also the collection or recovery of the goods themselves. But it should have gone further, also investigating whether the indication to the consumer, at the time when the products were placed on the market, of the provision of such a system of local collection and recycling of packaging waste, might have been capable of creating or maintaining a certain market share even for some specific products.
In fact – concludes the Court – the nature of most of the products associated with the collective mark in question, consisting of everyday goods capable of generating packaging waste on a daily basis, in no way excludes (and indeed probably confirms) that the indication on their packaging of the affiliation to such a system of local collection and ecological treatment of packaging waste may well influence consumers’ purchasing decisions and, consequently, contribute to the preservation or creation of market shares relating to the products. Which is sufficient to demonstrate the effective use of the collective mark, so as to prevent its revocation.
Giorgio Rapaccini and Alessandro Bura