Widening the scope: genuine use of trademarks


Anna Falter

German questions on the scope of the Bainbridge decision have been referred to the CJEU for a preliminary ruling. Anna Falter reports.

In the well-known Bainbridge decision dating from 2007 (C-234/06), the Court of Justice for the EU (CJEU) decided in an obiter dictum that it is not admissible to extend the protection afforded to a registered mark by virtue of the proof of use thereof, to a different mark which has been registered but not used, on the grounds that the latter mark is merely a slightly altered form of the former mark.

The question to be clarified in this instance was whether it is possible to use a word/figurative mark ‘Bridge’ by proving the use of the word mark ‘The Bridge’.

Although the CJEU merely expressed an opinion on the interpretation of Article 15(2)(a) of the Community Trade Mark Regulation (CTMR), the court itself pointed out that the content of this provision is identical to that of Article 10(2)(a) of the Trade Marks Directive; the same therefore applies to the provision in Section 26(3) of the German Trade Mark Act.

Bainbridge, CTMR, Proti, mark protection