ECJ endorses the concept of trademark series...

...and rules on the prevalence of European provisions relating to the use requirement.


After a few less inspiring judgments, the ECJ has broken new ground in endorsing the concept of serial marks in its judgment on the Bainbridge matter. In a visibly angry judgment, the Court dismissed the claimant's arguments, while ruling on a number of interesting questions, not always to the trademark owners' benefit.

The case involved the Italian company Il Ponte Finanziaria, owner of a total of eleven (11) Italian word and word/design or word/device trademarks, all consisting of or comprising the word element BRIDGE, as claimant , and the OHIM as defendant. The claimant's marks included, inter alia, registrations for BRIDGE and THE BRIDGE, both as word and as word/device marks.

Based on its prior marks, the claimant had opposed the CTM application for the mark BAINBRIDGE (CTM No 940007), claimed for ‘leather and imitations of leather, and goods made of these materials (cl. 18); animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’ and ‘clothing, footwear, headgear’ (cl. 25), basically the very goods for which its *bridge* marks enjoyed protection.

When the applicant (intervener in the proceedings before the ECJ) requested the claimant to furnish proof that his marks had been put to genuine use during the five year period preceding the notice of opposition (Art. 43 (2) of the Regulation), the claimant could only establish use of two of his marks. Some of the marks on which the claimant relied were still in their five year grace period, but five out of eleven were not. So the OHIM and the Court of First Instance based their assessment on the remaining six marks.

The claimant insisted that the remaining marks, or at least some of them, be taken into account as well based on

1. the concept of defensive marks under Italian law,
2. the concept of serial marks, and
3. the genuine use made of the mark THE BRIDGE through the (incontestable) use of the mark BRIDGE.

The concept of defensive marks, which is codified in the Italian Code on intellectual property, protects unused marks. Under that concept, there cannot be revocation for lack of use where the proprietor of an unused defensive trade mark is at the same time proprietor of one or more similar trade marks which are in force, and of which at least one is actually used to designate the same goods or services as those protected by that defensive mark (Art. 24 (4) of the Italian Intellectual Property Code).

Inoltre, neppure avrà luogo la decadenza per non uso se il titolare del marchio non utilizzato sia titolare, in pari tempo, di altro o altri marchi simili tuttora in vigore di almeno uno dei quali faccia effettiva utilizzazione per contraddistinguere gli stessi prodotti o servizi.

The concept of serial marks is not a proprietary Italian legal concept, but rather a civil law concept which exists in a number of jurisdictions, including, but not limited to, Germany, where the Federal Court of Justice has endorsed it in a number of decisions. The details of the concept, however, and the requirements for establishing a series of trademarks, vary from court to court.
In Germany, the Federal Patent court has repeatedly found in favour of indirect likelihood of confusion under the aspect of a series of marks ("mittelbare Verwechslungsgefahr unter dem Aspekt des Serienzeichens") where the trademark owner had simply provided proof of a number of registrations containing the same element, without however requiring proof of actual use of those registrations, and where effectively only one of them had been used - as in the BULL CAP case, where Red Bull had opposed the registration of the BULL CAP mark on the basis of its earlier registrations of not only RED BULL and BULL, but of a total of 36 marks containing the element BULL (though none of these appears to be used). The decision was later confirmed by the Federal court of Justice.

Generally, however, the existence of a trademark series is rather difficult to establish in court, as it marks an exception from the generally accepted principle that two specific marks have to be compared, and the the younger mark has to be confusingly similar to the older mark in order to confirm likelihood of confusion. If there is no such direct likelihoof of confusion, courts are generally reluctant to base claims on marks in respect of which there is no such likelihood of confusion - that is, unless there is actual proof on the existence of a true trademark series. The German Federal Court of Justice, in its BIG and BANK 24 lead cases has set the following criteria for a trademark series to be validly established:

• The public has to identify the element that forms the common root of several trademarks of a single company as the common source indicator pointing to that single trademark owner;
• The public will only assign a specific mark to a specific trademark owner based on that common root element if knows that this company has used that element in several other marks, and in particular, if that common root is also used as a catch word for the company itself.
• If the root element is well-known, then this speaks further in favour of a trademark series.

It follows from the aforesaid that the basis for serial marks must be the perception of the public resulting from actual use of a series of marks, not the the mere existence of a number of - used or unused - trademark registrations.

The OHIM, in its arguments before the Court, rejected the concept of "marks in a series", unless the marks being part of that series were actually used:

(56) (...) the taking into account of the serial nature of the earlier marks would entail widening the scope of the protection of such marks considered individually. Therefore, any assessment in the abstract of the likelihood of confusion, based exclusively on the existence of several registrations covering marks reproducing the same distinctive element, must, in the absence of any actual use of those marks, be excluded.

The judgment

Yes to trademark series, but only if in use

The ECJ, in its ruling, shares OHIM's view and gives very clear guidance both in relation to serial marks, and with regard to the interpretation of the use requirement stipulated in Art. 15 and Art. 43 (2) of the Regulation.

In its findings, the court endorsed the concept of "series" or "families" of trademarks on the basis of actual use of several trademarks capable of forming a series:

(63) (...) Where there is a ‘family’ or ‘series’ of trade marks, the likelihood of confusion results more specifically from the possibility that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for or considers erroneously that that trade mark is part of that family or series of marks.

64 (...) no consumer can be expected, in the absence of use of a sufficient number of trade marks capable of constituting a family or a series, to detect a common element in such a family or series and/or to associate with that family or series another trade mark containing the same common element. Accordingly, in order for there to be a likelihood that the public may be mistaken as to whether the trade mark applied for belongs to a ‘family’ or ‘series’, the earlier trade marks which are part of that ‘family’ or ‘series’ must be present on the market.

65 Thus (...) the Court of First Instance did not require proof of use as such of the earlier trade marks but only of use of a sufficient number of them as to be capable of constituting a family or series of trade marks and therefore of demonstrating that such a family or series exists for the purposes of the assessment of the likelihood of confusion.

No defensive marks in European disputes

The court then went on to reject the Italian legal concept of "defensive marks". It found the principle, which is enshrined in the Italian Intellectual Property Code, to be incompatible with the Community Trademark system. As a consequence, an Italian national mark the use of which need not be established under Italian law based on the defensive mark rule, cannot serve as a basis for an opposition within the CTM system if it has not been used in accordance with the Regulation's use requirements. Or, to quote the ECJ:

(101) The Court of First Instance did not err in law in holding, at paragraph 46 of the judgment under appeal, that a proprietor of a national registration who opposes a Community trade mark application cannot, in order to avoid the burden of proof which rests upon him under Article 43(2) and (3) of Regulation No 40/94, rely on a national provision which allows the registration, as trade marks, of signs not intended to be used in trade on account of their purely defensive function in relation to another sign which is being commercially exploited.

(...)

(103) The argument that the holder of a national registration who opposes a Community trade mark application can rely on an earlier trade mark the use of which has not been established on the ground that, under national legislation, that earlier mark constitutes a ‘defensive trade mark’ is therefore incompatible with Article 43(2) and (3) of Regulation No 40/94.

The judgment therefore rules out that any national legal provisions easing use requirements be taken into account when such national marks are used as a basis for actions against Community Trademarks before OHIM. And Italy is by no means the only country that has adopted such provisions.

Owners of German trademarks, for instance, may rely on the use of their mark in Switzerland to avoid cancellation even if their mark has not been put to genuine use in Germany itself, by virtue of the German-Swiss Convention on the reciprocal protection of patents, industrial designs and trademarks of 13 April 1892 (look here for a judgment by the Federal Court of Justice relying on that treaty). Here, again, the ECJ judgment means that this fictitious use cannot be invoked in proceedings before OHIM.

Which is only fair. If the European Trademark Office OHIM considers national rights as a basis for actions against Community Trademarks and applications for registration hereof, use of such rights must necessarily be assessed in accordance with the law that grants these national rights the power to prevent registrations of Community Trademarks, e.g. the Community Trademark Regulation. It was the European lawmaker who decided to consider national marks as prior rights in the CTM system. It must therefore be that lawmaker's use standard that is to be taken into account in disputes between CTMs and national marks.

Owners of facelifted marks: Cave Curiam!

Finally, the court also gave some guidance in relation to the interpretation of the use requirement, and more particularly in relation to the rule set by Art. 15 (2) (b), stipulating that

use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered shall also constitute use within the meaning of paragraph 1.

It found that a mark has not been validly used within the meaning of that provision if it has only been used in a slightly altered form which is itself the object of a separate registration. In the instance, it ruled that use of the mark BRIDGE was not sufficient to serve as proof also for the use of the separate mark THE BRIDGE:

(85) Without it being necessary to examine whether the trade mark THE BRIDGE (No 642952) may be regarded as being different solely by reason of elements which do not alter the distinctive character of the trade mark Bridge (No 370836), it must be stated that use of the former mark has not been established and cannot therefore in any way serve as evidence of use of the latter.

(86) In any event (...) it is not possible to extend, by means of proof of use, the protection enjoyed by a registered trade mark to another registered mark, the use of which has not been established, on the ground that the latter is merely a slight variation on the former.

In other words, if you start using your mark in slightly amended version, you need to make a choice:

• Either you choose to rely on the old registration, in which case you may - but only may - be using it in accordance with Art. 15 (2) (b), i.e. "in a form differing in elements which do not alter the distinctive character of the mark", in which case the protection of your original mark will be upheld - however accepting the risk that a court may later find that actually the modifications did alter the distinctive character,


• Or you choose to file for a new registration covering the version of your mark as you use it now, which will inevitably lead to the effective loss of the old mark's priority within five years' time, because you will then effectively be barred from enforcing it, be it still in force or not.

Owners of marks receiving "facelifts" may find themselves between a rock and a hard place if they have to choose one or the other. One would have hoped for somewhat more substantial criteria on whether the distinctive character of a mark is altered, not just a apodictic ruling that the application for a new registration covering the modified logo automatically leads to a slow death of the old registration, regardless of the extent of the modifications.

The Court was visibly irritated with the quality of the action brought before it (cf. sections 42 to 46 of the judgment) and rejected some of the claimant's arguments on formal grounds. It seems that the court's irritation has had some positive effect. Rather than avoiding any clear statement as in recent judgments, the Court used very clear language that will certainly make its way into the coming briefs of European trademark lawyers...