ECJ case law on genuine use of trademarks

In a number of decisions the European Court of Justice (ECJ) has clarified what constitutes use of a trademark in situations where the mark as used differs from the mark as registered, or where it is used only as part (the 'element mark') of a more complex trademark (the 'composite mark'). The decisions have relevance when arguing for acquired or enhanced distinctiveness through use, as well as when proving genuine use of a trademark.

In Nestlé (C-353/03) the ECJ allowed that the phrase “Have a break” could have acquired distinctiveness for the purposes of being registrable under Article 3(3) of the EU Community Trademark Regulation (207/2009), although it had been used only as a part of the slogan “Have a break…Have a Kit-Kat”. However, it was registrable only if the relevant consumers perceived “Have a break” as designating a certain commercial origin. The ECJ enumerated the usual factors for proving this, such as the market share held by the mark and how intensive, geographically widespread and longstanding the use of the mark had been.

A later case confirmed the relevance of this decision in relation to showing enhanced distinctiveness when assessing likelihood of confusion. Colloseum (C-12/12) further confirmed that the Nestlé decision is also relevant in relation to the genuine use requirement. The decision in Colloseum further clarified that it does not matter whether the composite mark itself is registered as a trademark.

The latest case from the ECJ on genuine use, Specsavers (C-252/12), added little to the interpretation of Article 15(1)(a) of the regulation; in its conclusion the ECJ cited the wording of the article, rather than elaborating on when the distinctive character is altered, and confirmed earlier case law. However, the ECJ had the opportunity to expound on the impact of the colour used by the claimant and the defendant. Practice among EU member states differs as to whether the fact that a mark registered in black and white but used in a specific colour has an impact on the scope of protection of that mark. In Sweden, the prevailing view has been that registering a mark in colour is inadvisable, as it would needlessly limit the scope of protection, whereas a black-and-white mark covers any colour. Following Specsavers, it may be that the scope of protection will be limited by extensive use of a certain colour. In addition, seeing as how extensive use of a certain colour results in stronger protection vis-à-vis an infringing mark of a similar colour, it may be that registration of a colour mark would likewise afford stronger protection against marks of that specific colour than a black-and-white registration would. Hence, it may be necessary to reconsider whether a black-and-white mark is always preferable to a colour mark.

The ECJ's decisions can be summarised as follows:

• Use of a composite mark, where the element mark is used in an altered form from that registered, may constitute genuine use of the element mark only to the extent that the differences between the form in which the element mark is used and that in which it was registered do not change the distinctive character of that element mark as registered. Use of a blank logo with a superimposed word mark is use in an altered form, rather than use of the mark in conjunction with another.
• If use of a mark is sufficient to make such mark registrable through acquired distinctiveness (even though the mark as used differs from the mark applied for), such use must also be sufficient to maintain protection for the same mark (ie, it must also constitute genuine use). The relevant criterion is whether the relevant public perceives the element mark as indicating origin. The usual factors for proving this apply, such as the market share held by the mark and how intensive, geographically widespread and longstanding the use of the mark had been.
• It does not matter that the composite mark is itself registered as a trademark.
• The actual use of a specific colour (by the claimant and/or the defendant) is a relevant factor in the global assessment, notwithstanding that the trademark is registered in black and white.

There are still several issues left unanswered by Specsavers:

• It is unclear whether the requirement that the relevant public perceives the element mark as indicating origin is the same as the requirement given in Article 15(1)(a) of the regulation that the distinctive character must not be altered. It could be that a use sufficient to make a mark registrable through acquired distinctiveness is also sufficient, but not necessary to amount to genuine use (ie, the threshold is lower when showing genuine use).
• It is unclear how a trademark applicant or owner can prove that the relevant public perceives the element mark as indicating origin by the usual factors as mentioned above, when these would relate to the composite mark as a whole. In practice, it may be necessary to provide a market survey.
• The extent of the impact of the use of a specific colour is not clear (eg, whether it is equivalent to the mark being registered in that colour). If the assessment is made in such a manner, this would echo the possibility under Swedish national law to obtain protection for a non-registered trademark if it is well known in a substantial part of the country. This appears reasonable, as protection for the colour mark as used would thus have been granted (under Swedish law at least) had there not been a black-and-white registration and, as the ECJ has already stated, the maintenance of the protection of a certain mark is not affected by the trademark owner also having registered other trademarks. However, this conclusion may lead to issues of timing – for example, when arguing for revocation of a later trademark because of likelihood of confusion based on the similarity of colours between the earlier mark as used and the later mark, could the owner of the earlier trademark rely on the application date or only on the date when the use of the colour passed the threshold of being sufficiently associated by the relevant public? While the latter conclusion would seem logical from the perspective of non-registered trademarks, in practice it would lead to protection for a trademark which is different in its scope of protection from the registered mark as to both  the visual characteristics of the mark and the time from which protection is granted.

The cases referred to above appear to create the possibility of gaining EU-wide protection for non-registered trademarks, such as can be found under national law – albeit in a limited fashion, since it relies on similar trademarks being registered. In Rintisch (C-553/11) the ECJ rejected the notion that the EU Trademark Directive’s equivalent of Article 15(1)(a) would not apply to defensive trademarks; and the pursuit of such a strategy should be no less valid after Specsavers, albeit that a trademark owner will now need to be aware of the double-edged nature of using a specific colour extensively in relation to a trademark registered in black and white.