It is never a surprise for us to hear that a trade mark owner is using its registered mark in a different form to that in which it was registered. In Bernhard Rintisch v Klaus Eder (Case C – 553/11) the CJEU recently provided some peace of mind for trade mark owners who make minor modifications to their marks over time, confirming that as long as the use in the different form does not alter the distinctive character of the registered mark, the registration is not at risk of being cancelled. More major changes, though, may make a new registration advisable.
In this case, the CJEU was asked to consider whether there is genuine use of a trade mark where the actual use differs from the mark as registered, but where the differences in appearance do not alter the distinctive character of the mark.
Mr. Rintisch was the proprietor of the earlier marks PROTI, PROTIPLUS and PROTI POWER for protein-based products. He issued invalidity proceedings relying primarily on the PROTI mark, and secondarily on PROTIPLUS and PROTI POWER marks against Mr. Eder’s later registration for PROTIFIT for inter alia food supplements. Mr. Eder contended that Mr. Rintisch had failed to use the PROTI mark. Mr. Rintisch maintained that he had genuinely used the mark by using the PROTIPLUS and PROTI POWER marks.
The German Court held that the PROTIPLUS and PROTI POWER marks had been genuinely used and that such use was in a form that did not alter the distinctive character of the PROTI mark. However, the Court was unclear as to the extent to which German law was consistent with Articles 10(1) and 10(2)(a) of the Directive. Specifically, the Court questioned whether the mentioned provisions precluded a rule where use of a trade mark must be presumed even if it was used in a form differing from the form in which it was registered, with those differences not having an effect on the distinctive character of the mark, and if the mark in the form used was also registered
Under the CTM system a CTM registration becomes vulnerable to cancellation by third parties if there is no genuine use in the Community by the proprietor or with its consent in relation to the registered goods or services for a continuous period of five years or more (unless there are acceptable reasons for such non-use, which are rarely found). Such use is permitted to differ from the registered form only in elements that do not alter the distinctive character of the mark as registered.
The CJEU held that Article 10 does not require absolute conformity between the form of the mark used and the form in which it has been registered. This decision confirms that trade mark owners have the freedom to make minor modifications when marketing and promoting their marks over the years, provided that such modifications do not alter the distinctive character of the mark.
The Court also held that there is no provision in EU law preventing the concept of filing ‘defensive’ trade marks.
Interested parties are going to have to take more care in bringing cancellation proceedings, as the challenged party may be able to rely on a slight variation of the mark thereby warding off the challenge to the registration.
Of course, marks that are varied in ways that affect distinctiveness, such as inter alia notably different fonts or adding logos to a word mark, should generally be registered separately to ensure that a proprietor retains strong and enforceable rights.
When considering non-use cancellation actions against third parties, the best practice going forward is for interested parties to do their due diligence by reviewing the IP portfolio of a registered proprietor before bringing non-use cancellation proceedings.
Although this decision may bring some relief to many clients, there is a warning to be heeded here too. As soon as trade mark owners start modifying the look and feel of their marks, they could end up altering what makes their mark distinctive. Best not to veer too far away from what you have registered and if there is any question as to what is too far away, then a new registration maybe advisable. Every case must be considered on its facts, and there is no substitute for professional advice when something as fundamental as a brand is changed, even if only in minor ways.