ECJ on genuine use of Levi’s “red label” trademark
On 18 April the European Court of Justice (“ECJ”) issued its preliminary ruling in case C-12/12 regarding the genuine use of a trademark corresponding to the well-known red label put on the rear pocket of Levi’s trousers. In the relevant proceedings Levi Strauss & Co. faced the German company Colloseum Holding AG which was running a shop offering for sale jeans bearing, on the rear pocket, small rectangular red fabric tags on which word trademarks appeared amongst which “SM Jeans”. Levi Strauss therefore applied to the competent German court seeking, inter alia, an order that Colloseum be directed to refrain from offering or marketing such trousers or stocking them for those purposes.
Levi Strauss’ claims were grounded on the company’s figurative CTM no. 2 292 373, registered on 10 February 2005, covering a red label without any wording inside it. This trademark, based on what ascertained in the main proceedings, had acquired distinctive character in consequence of the use which had been made of it within the composite mark consisting of the red label and the Levi’s word trademark. Based on this, it could be registered pursuant to Article 7(3) of EC Regulation no. 40/94 on the Community Trade Mark (later replaced by Regulation no. 207/09): according to this provision, in fact, trademarks originally devoid of any distinctive character can be registered if they acquired distinctive character in consequence of the use which had been made of them.
Colloseum replied that the enforced registered trademark was actually void as it had not been used after registration in accordance with Article 15(1) Reg. no. 40/94, based on which “If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use”. In particula, according to Colloseum, Levi Strauss never used the red label alone but it always used it together with the Levi’s word trademark. In addition, the figurative trademark including both the red label and the Levi’s word trademark was registered itself: as a consecuence, the Levi’s trousers red label constituted use of the Levi’s word trademark or of the composite trademark consisting of the red label plus the Levi’s word trademark, but not use of the trademark consisting of the red label alone, i.e. without any wording.
In this situation, the German court referred the issue to the ECJ asking “whether the condition of genuine use of a trade mark, namely use such as to preserve the rights of the trade mark proprietor, as referred to in Article 15(1) of Regulation No 40/94, is satisfied where 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 the two marks is, furthermore, itself registered as a trade mark”.
In providing its preliminary ruling, the ECJ firstly highlights that “the ‘use’ of a mark, in its literal sense, generally encompasses both its independent use and its use as part of another mark taken as a whole or in conjunction with that other mark”. Of course, however, “a registered trade mark that is used only as part of a composite mark or in conjunction with another mark must continue to be perceived as indicative of the origin of the product at issue for that use to be covered by the term ‘genuine use’ within the meaning of Article 15(1)”. In addition, the fact that the trademark acquired distinctive character due to the use made of it before the registration, enabling it to be registered under Article 7(3) above, is not sufficient to demonstrate the genuine use of the same after the relevant registration, as required by Article 15 (1).
Having said the above, the Court – of course without deciding the merits of the issue, which is left to the German court – finds that “The condition of genuine use of a trade mark, within the meaning of Article 15(1) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, may be satisfied where 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”.