Cabinet Beau de Loménie
The use obligation, under penalty of revocation, is an essential limit to the proliferation of unused or partially used trademarks on the registers. Thus, Article 10 of the Council Directive of 21 December 1988 harmonizing the trademark laws of Member States, transposed into French law in Article L.714-5 of the Intellectual Property Code, laid down the conditions for the revocation of a mark for non-use, the terms under which the action must be commenced and the types of genuine use allowed to avoid such revocation.
These types of use particularly interest the defendant in an action for revocation, who must provide proof of genuine use of the mark(s) which use is disputed. In the ideal case, he will prove that his mark(s) is used as registered. Sometimes, however, owners make changes to their trademarks over time and have to prove that the changes, registered or not, meet the legal defintion of “use in a modified form” which does not alter the distinctive character of the mark, which is acceptable use, pursuant to Article 5, C, paragraph 2, of the Paris Convention.
In answer to questions referred by the German Bundesgerichtshof, on the notion of use in a modified form, the European Court of Justice (ECJ), in a judgment of 25 October 2012 (ECJ, 25 October 2012, Case C-553/11, Bernhard Rintisch against Klaus Eder), specified the conditions under which the owner of a trademark could validly claim its use in a modified form. In this case, the German Courts had refused to validate the use, made by Mr. Rintisch, of his national trademarks "PROTIPLUS" and "Proti Power" in favor of his other national trademark "PROTI", the latter being unused in its sole form.
The Court started by recalling that the use of a registered trademark in a form that does not alter its distinctive character is acceptable to avoid revocation for non-use. It furthermore stated that whether or not this modified form had been registered is irrelevant. The Court justified its decision by the fact that the owner of a registered trademark must be able to make "variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned" (paragraph 21).
This decision thus challenges French and European case law. The French Supreme Court (notably Cass. Com., June 12, 2012, Denis Durantou SARL) and the General Court of the European Union (General Court, Case T-194/03, February 23, 2006, Il Ponte Finanziaria SpA against OHIM, BAINBRIDGE), had judged that the owner of a trademark, who files another trademark repeating the first by modifying elements which do not alter its distinctive character, intended to distinguish one mark from the other and that, therefore, use of one of these trademarks may not be used to justify genuine use of the other.
The ECJ however states that the BAINBRIDGE decision is not being challenged as concerns the unacceptability of the use of a trademark in a modified form, itself also registered as a trademark, if it is a “‘defensive’ trademark which is registered only in order to secure or expand the protection of another registered trademark". Indeed, the BAINBRIDGE decision, as it relates to the notion of "defensive trademarks” or “family of trademarks", recognized by certain national laws (in this case Italian), remains valid (this notion, unknown in Community law, does not apply). It is also unknown to French law.
Ultimately, it appears that it is the alteration of the distinctive character of a trademark, and not the multiplicity of registrations, that will determine whether or not one use can prevent the revocation of two trademark registrations for non-use.
Thus, the filing of a modified trademark is again considered possible (without risking the revocation of the initial form of the trademark on the grounds that the owner cannot prove genuine use of that former trademark).
Trademark owners can only welcome this decision which has the merit of taking into account the interests of businesses and of clarifying their rights and the conditions for filing their trademarks, in a legally secured context. They must, however, remain vigilant regarding the interpretation that the courts may give to the notion of “alteration of the distinctive character” in the future.