CJEU delivers ‘genuine use’ ruling in Levi case
IP owners can show genuine use of a trademark even if that use derives from a separate composite mark, Europe’s highest court ruled on Thursday.
The Court of Justice of the EU (CJEU) was ruling on a case between two clothing retailers, Levi Strauss and Colloseum Holding, which was referred by Germany’s Supreme Court (the Bundesgerichtshof).
Levi’s has a German word and figurative mark containing ‘Levi’s’ in a red rectangular element on a left pocket, as well as a figurative Community trademark (CTM) consisting of a rectangular red label (no word) sewn into a left pocket.
The US retailer sued Colloseum after it began selling branded jeans with rectangular red fabric tags, on which its brands are sewn into the right seam of the right rear pocket. Colloseum claimed Levi’s does not use its CTM.
Colloseum’s appeal was twice dismissed in Germany, before the Supreme Court asked the CJEU to decide whether Levi’s CTM has been put to genuine use, even though that mark had been used only in the form of its German mark.
The CJEU agreed that ‘genuine use’ does apply to distinctive marks used only through another composite mark – as one element of that composite mark – or those used only in tandem with another mark, and the combination of the two marks is itself registered as a trademark.
Regardless of whether the sign is used as part of another mark or with another mark, the CJEU said, the key question was whether the sign, in the minds of a relevant class of people, identified the goods that it covers.
“A registered trademark that is used only as part of a composite mark or in conjunction with another mark must continue to be perceived as indicative of the origin of the product at issue for that use to be covered by the term ‘genuine use’,” the court said.
The decision was not surprising, said Jens Matthes, partner at Allen & Overy LLP in Düsseldorf, because of the recent Proti case (also from Germany) that dealt with a very similar question, ruling that using a trademark in a different form can constitute genuine use.
He added: “The approach in German law is already in line with that taken in the Levi case. It’s a relief for trademark owners and assuring that the CJEU backed the German legislation.”
Matthes said trademark owners may think about filing marks that omit the word of an existing device mark in order to provide enhanced IP protection.
“I would encourage everyone with non-word branding to add new registrations that carve out certain elements and omit the word. Do this sooner rather than later in order to have the right weapon to act against imitators,” he said.
The case is now expected to go straight back to the German Supreme Court, said Matthes, who expects it to issue an injunction against Colloseum.
