In Bernhard Rintisch v Klaus Eder  553/11, the Court of Justice of the European Union (CJEU) has held that in order to establish genuine use, a trade mark owner is not precluded from relying on the fact that it has used its mark in a form differing from its registered form, provided that the differences do not alter the distinctive character of that trade mark. This applies even where the different form is itself registered as a trade mark.
Mr Rintisch owns three German trade marks for PROTI, PROTIPLUS and PROTIPOWER registered for, inter alia, protein-based products. Mr Eder is the proprietor of a later filed application for PROTIFIT, registered for food supplements, vitamin preparations and dietetic foodstuffs. Mr Rintisch brought an action before the German courts seeking consent from Mr Eder for cancellation of the trade mark PROTIFIT, prohibition of use of the mark and compensation in damages, basing his claims primarily on the mark PROTI and, in the alternative, PROTIPLUS and PROTIPOWER. Mr Eder contended that Mr Rintisch had failed to use the mark PROTI. Mr Rintisch responded that he had put the mark to use by using the trade names PROTIPLUS and PROTIPOWER. Mr Rintisch’s claims were rejected at first instance.
On appeal to the Federal Court of Justice of Germany, the Bundesgerichthof, the Court found that the trade names PROTIPLUS and PROTIPOWER did not alter the distinctive character of PROTI and that Mr Rintisch had put the trade marks PROTIPLUS and PROTIPOWER to genuine use prior to the publication of the registration of PROTIFIT. The Court was, however, uncertain to what extent German law was consistent with Articles 10(1) and 10(2)(a) of Directive 89/104/EEC (now 2008/95/EC), which deal with the consequences of non-use of a trade mark. It referred questions to the CJEU concerning circumstances in which a trade mark used in a different form can be regarded as having been put to genuine use.
The CJEU held that Article 10 does not require strict conformity between the form of the mark used in commerce and the form in which the mark is registered. Accordingly, a trade mark owner can make modifications to a mark in its commercial use in order to better adapt it to the marketing and promotion of its products and services and to changing market conditions. In order to establish genuine use, a trade mark owner is not precluded from relying on the fact that it has used the mark in a form that differs from the form in which it was registered, provided that the differences between the two forms do not alter the distinctive character of that trade mark. This applies even where the different form is itself a registered trade mark.
The CJEU held further that the subjective intention of a trade mark owner when seeking to register a trade mark is irrelevant for the purpose of applying Article 10(2)(a). Article 10(2)(a) has to be interpreted as precluding an interpretation of national law that the provision does not apply to a defensive trade mark that is only registered in order to secure or expand the protection of another registered trade mark, that is registered in the form in which it is used.
The judgment may be of assistance to trade mark owners that adapt their registered trade marks to better suit their marketing and promotional needs and are put to proof of use during opposition proceedings. Conversely, it may conceivably complicate situations where a business is seeking cancellation of a registration owned by a competitor on the basis of non-use, as the challenged party may be able to rely on slight variations of the challenged mark within its trade mark portfolio in order to prove genuine use.