International trade mark are subject to "genuine use" requirements in the EU

In Rivella v OHIM,¹ the Court of Justice of the European Union (ECJ) has confirmed that international trade marks that have effect in the EU are subject to genuine use requirements under Article 42(2) and (3) of Community Trade Mark Regulation (the Regulation).² The ECJ ruled that the General Court of the European Union had been correct in holding that use of a Community trade mark (CTM) in the EU was exhaustively and exclusively governed by EU law. The decision emphasises the importance of establishing use in the relevant territory before basing a trade mark opposition on that mark.

Key law

• Article 8(2)(a) of Regulation: an "earlier trade mark" (upon which an opposition may be based under Article 8(1)) is one that was applied for before the opposed CTM application. Where appropriate this should take account of priorities for the following marks: (i) CTMs, (ii) marks registered in a Member State or in the Benelux region, (iii) international trade marks effective in a Member State or (iv) international trade marks effective in the Community.
• Article 42 of Regulation Article 42(2): a trade mark opposition will be rejected if, at the applicant's request, the opposer is unable to prove genuine use of their earlier mark during the five years preceding publication of the CTM application. This does not apply to marks registered less than five years or where there are proper reasons for non-use.
• Article 42(3): paragraph 2 applies to earlier national trade marks referred to in Article 8(2)(a) by substituting use in the Member State where the earlier mark is protected for use in the EU.
• Article 4(1) of Madrid Agreement and Article 4(1)(a) of the Madrid Protocol³ a trade mark registered through these systems should be treated the same as if it had been filed directly at the relevant national or supranational trade mark office.
• Article 5(1) of the 1892 Convention⁴ the Convention between Switzerland and Germany states that, by virtue of the reciprocal protection of patents, trade marks and designs, use of a trade mark in Switzerland is equivalent to its use in Germany and vice versa.

Background to the case

Baskaya di Baskaya Alim e C. Sas (Baskaya) filed an application for the figurative CTM "BASKAYA" under classes 29, 30 and 32 with the CTM registry (OHIM). The application covered a range of food and beverages including coffee, tea, beers and non-alcoholic drinks. Rivella opposed the application on the basis of its earlier international figurative mark "PASSALA"⁵, registered in class 32 in countries including Germany, Spain, France, Italy, Austria and the Benelux. Rivella's mark covered: "Beer, ale and porter; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages."

Rivella's opposition was rejected by OHIM, on the basis that genuine use of the mark could not be shown in the EU Member States in which its mark was registered. To oppose an application of a CTM based on an earlier registration, the holder of the earlier mark has to prove genuine use in the Community during the five preceding years. Rivella attempted to rely on the 1892 bilateral Convention between Switzerland and Germany to show that use of the mark in Switzerland - not a EU Member State - constituted genuine use in Germany. Rejecting Rivella's appeal, the General Court held that genuine use had to be established in the EU or in the Member State concerned - the bilateral Convention did not bind the EU.⁶

The ECJ's decision

• Genuine use
  Rivella claimed that Articles 42(2) and (3) of the Regulation did not apply to international marks but only to CTMs and national trade marks. Accordingly, the General Court had been wrong to require it to provide proof of use of its mark in Germany.
  ECJ ruled: under Article 4(1) of the Madrid Agreement and Article 4(1)(a) of the Madrid Protocol, international marks should be treated as if they had been filed directly with the relevant national trade mark offices. The ECJ confirmed that international trade marks as referred to in Article 8(2)(a)(iii) of the Regulation were subject to the same system as national trade marks and accordingly Article 42(3) applied to international marks.
• National law versus EU law
  Rivella submitted that contrary to the findings of the General Court, the question of "territorial validity" of a nationally-registered mark was exclusively governed by national law. That was particularly true for national marks that registered under international arrangements that had effect in a Member State.
  ECJ ruled: the CTM system is autonomous and should be applied independently of any national system. The General Court was right in finding that use of a CTM in the EU was exhaustively and exclusively governed by EU law.
• Bilateral Convention
  Rivella claimed the fact that use of "BASKAYA" might be prohibited in Germany by virtue of the 1892 Convention could affect the unitary character of the CTM.
  ECJ ruled: the unitary character of a CTM is not absolute. The Regulation sets out a number of exceptions that allow the proprietor of an earlier right that only applies to a particular locality to oppose use of a CTM in their protected territory.

The ECJ therefore dismissed Rivella's appeal. The case highlights the importance of ensuring that a trade mark is robust before using it as the basis of an opposition. Being able to establish use in the relevant territory is vital. This decision confirms that where a CTM is concerned, such use must have occurred in the EU - irrespective of contrary provisions in local law.

Please click on the links below for the other articles in the March 2014 Technology & IP newsletter

• Linking to free content does not infringe copyright
• The Trademark Clearinghouse: Protecting your trade mark online
• Dedicated meta search engine breaches database right
• Court of Appeal confirms Greek yogurt must be made in Greece
• The new Defamation Act: headline issues

_{Notes:
⁽¹⁾ Rivella International v Office for Harmonisation in the Internal Market, Case C 445/12 P, 12 December 2013.
⁽²⁾ No 207/2009.
⁽³⁾ Madrid Agreement concerning the International Registration of Marks (1891) and Protocol Relating to the Madrid Agreement (1989).
⁽⁴⁾ The Convention between Switzerland and Germany on the reciprocal protection of patents, designs and trademarks (1892).
⁽⁵⁾ Registered on 30 June 1992 under the number 470542.
⁽⁶⁾ Rivella v OHIM, Case T-170/11.}