European Union: General Court Clarifies "Genuine Use" Of Trade Mark

On 16 April 2015, the EU General Court (the "GC") handed down a judgment on the requirements for genuine use of a trade mark (Case T-258/13, Matratzen Concord v. OHMI-KBT (ARKTIS)). Under Article 51(1)(a) of Regulation No 207/2009 of 26 February 2009 on the Community Trade Mark (the "CTM Regulation") a Community trade mark ("CTM") can be revoked if it was not put to genuine use by the trade mark holder.

KBT & Co. Ernst Kruchen agenzia commercial sociétá in accomandita ("KBT") holds the registration for the CTM "ARKTIS" (No 2 818 680). The trade mark is registered in class 20 (pillows, sleeping bags) and class 24 (bedding, bed blankets) of the Nice Classification. In 2011, the registration of ARKTIS in respect of goods in class 20 was revoked on the basis of non-use, after proceedings initiated by Matratzen Concord GmbH ("Matratzen"). In contrast, the revocation claim for goods of class 24 was rejected. On appeal, the Board of Appeal of the Office for Harmonisation in the Internal Market ("OHIM") confirmed this rejection.

Matratzen further appealed this decision to the GC. The claim for revocation was based on Article 51(1)(a) of the CTM Regulation. Matratzen contended that the trade mark holder had failed to demonstrate genuine use of the ARKTIS trade mark for "bedding and bed blankets" products.

According to recital 10 of the Regulation, affording protection to a CTM is only justifiable if the CTM is actually used. Hence, Article 51(1)(a) of the CTM Regulation specifies that the CTM may be revoked in the absence of genuine use in the EU in the 5 years following its registration (See, VBB on Belgian Business Law, Volume 2014, No. 7, p. 9 and No. 6, p. 9; Volume 2010, No. 10, p. 7; Volume 2009, No.1, p. 10, available at www.vbb.com).

The GC considered the requirements for genuine use of a CTM under the CTM Regulation. Genuine use exists if a CTM is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods for which it was registered, in order to create or preserve an outlet for those goods. The GC held that in the assessment of whether the use in question is genuine, all facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real have to be taken into account, in particular the nature of those goods, the characteristics of the market and the scale and frequency of use of the mark (See, VBB on Belgian Business Law, Volume 2011, No. 10, p. 12-13, available at www.vbb.com).

In the case at hand, the brand ARKTIS was used in respect of pocket duvets, through placement on the corner label of the goods. In the absence of direct placement of the brand on the good, the goods were identified as "ARKTIS goods" in the company brochure, the product sheets, invoices and delivery notes. The GC agreed with the Board of Appeal that, despite the placement of a trade mark on the good itself being the most obvious type of use, this is not actually required under the CTM Regulation, since all facts and circumstance have to be taken into account. For bedding, a product with a soft and delicate nature, it is not sensible to place the CTM on every good directly. Moreover, for an assessment of whether a type of use can be qualified as being "genuine", quantity is not always relevant, since its status of genuine use depends on the characteristics of the goods in question (See, VBB on Belgian Business Law, Volume 2009, No. 3, p. 8, available at www.vbb.com).

Furthermore, the GC held that the use of the term "LINE" in combination with a registered CTM can be perceived by the average consumer as identifying the product line covered by such a mark. Therefore, the addition "LINE" should be seen as an additional term, without distinctive character.

The GC concluded that the trade mark holder sufficiently demonstrated genuine use to maintain the right of the "ARKTIS" trade mark in respect of "bedding; bed blankets" in class 24.

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