Community Trade Marks and 'Genuine Use'

The General Court has recently decided on a dispute involving the interpretation of the principles of 'genuine use' of Community trade marks ("CTM"). The Court's decision can be found in Case T-258/13, which involved revocation proceeding for non-use of the ARKTIS word mark brought according to Article 51(1)(a) of Regulation 207/2009.

Background

The Cancellation Division revoked registration of ARKTIS in respect of goods in class 20 (pillows, sleeping bags") but rejected the revocation claim for "bedding, bed blankets" in class 24.

Board of Appeal

The Board of Appeal confirmed the original decision on the basis that the CTM owner could prove genuine use of its mark for the goods in class 24. The CTM owner also submitted sufficient evidence of use of the word in the form of its ARKTIS LINE logo, featuring diagonal bands sewn at its products' corners. The mark appeared on products sheets, invoices, delivery notes and sales statistics concerning two of the CTM proprietor's licensees, marketing the relevant goods respectively in Germany and Denmark, Belgium and Austria.

General Court

On appeal to the General Court, Matratzen Concord lodged a single plea in law alleging the violation of Article 51(1)(a) of Regulation 207/2009, in that the CTM proprietor failed to prove any use of its ARKTIS mark for "bedding and bed blankets" or that any such use was genuine within the meaning of the CTM Regulation. The General Court agreed with the Board of Appeal's findings and reasoning and therefore rejected the appeal.

The CTM system avoids granting protection to a mark where use of that mark simply to prevent competitors from registering and using identical or similar marks for identical or similar goods and services. According to the settled-case law, if it is to be regarded as genuine trade mark use must appear to be a use of a mark in connection with its essential function as a commercial origin identifier, with the purpose of creating or maintaining a market share for the products and services it covers.

The case is helpful as it outlines an analysis of the requirements to retain a CTM's genuine use, by applying Article 15 of Regulation 207/2009 to the factual and quantitative circumstances of the case.

The General Court affirmed not only that the contested mark was used but that its use could be qualified as genuine from the perspective of its extent, duration and nature.  Such use does not need to be always quantitatively relevant, since its status as genuine use depends on the characteristics of the goods and services that are being examined. The ARKTIS mark satisfied the relevant criteria in the light of the sales documented in invoices and in the sales statistics evidence of which had been supplied by the CTM proprietor.

Applying Article 15(2)(2) of Regulation 207/2009 the General Court held that the use of the ARKTIS mark through the CTM proprietor's licensees included use by a licensee with whom it entered into the licence agreement in 2011 and thus outside the revocation proceeding's relevant period was also to be considered in the assessment of genuine use since the CTM proprietor had specified that this licensee used the mark within the relevant period i.e. 2006/2009, with its consent.