CJEU rules on genuine use of collective trade marks

The Court of Justice of the European Union (CJEU) has ruled that the indication of the affiliation with a local waste collection may influence consumers’ purchasing decision and consequently contribute to maintain or create a share in the market for the goods or services protected by the mark.

Earlier this week, in its judgment in C‑143/19 P, the CJEU annulled the General Court (GC) and the European Union Intellectual Property Office (EUIPO) decisions regarding the revocation of the collective mark “Representation of a circle with two arrows”. This judgement dealt, in particular, with the issue of the genuine use of collective trade marks and the assessment of the use of such mark on the market.

Collective trade marks were introduced into the EU trade mark system with the aim of enabling consumers and traders to recognise packaging which is included in the dual system and goods with such packaging, and to distinguish them from other packaging and good.

Der Grüne Punkt’s trade mark

Background

On 12 June 1996, Der Grüne Punkt — Duales System Deutschland GmbH (Der Grüne Punkt) filed an application for registration of an EU collective trade mark with the EUIPO. The application was granted.

As from 2 November 2012 the Cancellation Division of EUIPO revoked the mark for certain goods as it had not been put to genuine use for the goods for which it had been registered. The Fifth Board of Appeal of EUIPO dismissed the Der Grüne Punkt’s appeal against this decision, observing that from the consumer’s point of view the contested mark had not been used to show the origin of the goods at issue.

In the appeal proceedings before the GC, this court held that the applicant has not demonstrated, for the relevant period, genuine use.

The CJEU decision

The applicant invoked infringement of Article 15(1) of Regulation No 207/2009 together with Article 66 (now articles 18(1) and 74 of Regulation (EU) 2017/1001) claiming the use of the mark not only for the packaging of goods but also for the packaged goods at issue. According to Der Grüne Punkt, the contested mark indicates certain intangible characteristics of the goods at issue, namely the undertaking’s conduct.

The CJEU, after recalling the case-law concerning both the function of collective trade marks and genuine use, stated that there is ‘genuine use’ of a collective mark where the mark is used in accordance with its essential function, which is to distinguish the goods or services of the members of the association from others which have another origin in order to create or preserve an outlet for the goods or services. [57]

According to case law proving that the use of the mark create or preserve an outlet for the goods or services that bear the sign entails the use of the mark on the market for the goods or services protected by that mark. Such exam must be conducted considering all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market 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. (Ansul, C‑40/01)

The CJEU pointed out that the GC did not perform the examination to establish the use of the mark on the market. In fact, the GC considered that the consumer understands that the packaging and not the product itself is part of a sound waste management system but it did not analyse if this indication is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark. [68]

Some of the economic sector concerned covers everyday consumer goods, such as food, drinks that generate packaging waste on a daily basis. It cannot be excluded that the indication of the affiliation with a local waste collection may influence consumers’ purchasing decision and consequently contribute to maintain or create a share in the market for the goods or services protected by the mark. [70]

Comment

The decision recognises the importance of the use of the mark as the indication of the affiliation to a sound waste management system for the consumer. Such an indication, influencing the consumer’s purchasing decision, contributes to maintaining or creating a share in the market for the good or services protected by the mark. This allows demonstrating the genuine use of the mark.

Could such a decision, which is in any case limited to the proof of the genuine use, be seen as a sort of embryonic step to the further development of the functions of trade mark? Could trade mark law acquire a specific and stronger role in the framework of environmental sustainability?