Australian brand owners that have registered trademarks
in Europe must heed a recent decision on the continuing requirement
of trade mark use.
We all know that it is a requirement that registered trade marks
be put to use, otherwise they can be removed.
The issue of whether a mark has been put to genuine use is often
a tricky one, taking in issues such as the form in which the mark
has been used and the extent to which the mark has been used
against the goods/services covered in the specification.
The issue regarding the form of the mark used in particular
seems to trouble the courts. This commonly happens when a mark is
registered in one form, but is used in that form, together with
another mark or as part of a complex mark.
Is this the use of one single trade mark, or is this the use of
a number of marks all at the same time? The answer is critical as
it will often determine whether a registered mark should be
maintained, or whether it should be removed for non-use.
We have a recent ruling from Europe's highest court
clarifying the position in this regard.
Put simply, the issue in the proceedings was whether the use of
Levi's well known red tab mark containing the word LEVI'S
(shown below left, the subject of a separate registration), accrued
to the benefit of Levi Strauss' registration for its red tab
mark that did not contain the word LEVI'S. That is, could the
non-verbal mark withstand a non-use challenge:
Levi Strauss sought to enjoin the use of a red tab by Coloseum
on its jeans in Germany.
The issue referred to the Court of Justice related to whether
the use of the LEVI'S label mark constituted use of the
non-verbal mark. This was not a case in which Levi Strauss could
rely on the differences between the two marks being insubstantial,
as LEVI'S is clearly a distinctive element of the mark as
Nevertheless, it was held that genuine use can be established
"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."
The decision is important for Australian brand owners that have
sought protection of their own marks in Europe. To the extent that
such marks have become potentially vulnerable to attack for non-use
(due to having been registered for 5 years for more), or that are
subject to the proof of use provisions, the decision of the Court
of Justice can assist in circumstances where the mark as used in
the EU is only part of a registered mark. But that is not the end
of the matter. The brand owner will still need to demonstrate that
the mark the subject of the registration has become distinctive,
which is by no means an easy task.
For Australian brand owners with a portfolio of marks in Europe,
the decision provides a reminder of the continuing requirement of
use, and brand owners should be auditing their portfolios to check
whether the way in which they use their marks corresponds to the
registered form of the mark, or to assess whether the individual
components of complex marks have become distinctive with time. In
that case, there is likely to still be benefit in separately
protecting those components.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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