In Colloseum Holding AG v Levi Strauss & Co  C–12/12 WLR (D) 143 the Court of Justice of the European Union (CJEU) has held that a trade mark will be considered to have been put to genuine use where it has become distinctive through use as part of another trade mark, as long as the other trade mark is also registered.
This was a preliminary reference from the German courts in respect of trade mark infringement proceedings between Colloseum Holding AG and Levi Strauss & Co. Two of Levi’s trade marks were at issue. The first, referred to in the judgment as No.3, is a figurative mark consisting of the word LEVI’S in a red rectangle at the left upper edge of a pocket. The other, referred to as No.6, consists of a red rectangular label (without any words) at the upper left edge of a blue pocket. No.6 contains a disclaimer against the colour and shape of the pocket itself and was registered on the basis of acquired distinctiveness.
Colloseum is a clothing manufacturer that placed on the market jeans with a small red tag containing the word SM JEANS sown into the outer seam of the right hand pocket. In the course of proceedings, Colloseum alleged invalidity of No.6 as it has not been put to genuine use in accordance with Article 15(1) of the Community Trade Mark Regulation (CTMR). Colloseum argued that the red tag in No.6 had only been used in the form of No.3, which was not sufficient to be considered genuine use. The referring court was of the view that if No.6 was valid it had been infringed by Colloseum.
The CJEU summarised the questions posed by the German court as
"Whether the condition of genuine use of a trade mark […] is satisfied where a registered trade mark, which has become distinctive as a result of the use of another composite mark of which it constitutes one of the elements, is used only through that other composite mark, or where it is used only in conjunction with another mark, and the combination of the two marks is, furthermore, itself registered as a trade mark."
The CJEU began by emphasising that the condition is whether or not the use of a mark, regardless of whether it is used alone or in conjunction with another mark, serves to identify goods or services in the minds of the relevant consumer. It also noted that use within the meaning of Article 7(3) CTMR, which provides for registration of a sign that has become distinctive through use, cannot be relied upon to establish use under Article 15(1) CTMR as Article 15(1) CTMR refers to the five-year period following registration of the mark.
Nevertheless, following its decision in Nestlé  C-353/03 ECR I-6135, the CJEU reiterated that use of a mark encompasses "both its independent use and its use as part of another mark taken as a whole or in conjunction with that other mark". The use is therefore analogous to that required under Article 7(3) CTMR. The CJEU concluded that the requirements of Article 15(1) CTMR are satisfied where a registered trade mark that has become distinctive through the use of another registered mark is used only through the use of that other mark and the combination of the two marks is registered.
It is a common brand protection strategy to register different iterations of a trade mark to ensure maximum protection. In this instance, the well-known Levi’s red tab had acquired distinctiveness through the use of the red tag with the word LEVI’S written on it.
The CJEU’s confirmation that the use of the two registered marks in conjunction with each other was sufficient to satisfy the requirement of genuine use will come as comfort to brand owners, as it potentially increases their scope for protection. That said, where a mark has been registered on the basis that it has acquired distinctiveness through the use of another mark, the proprietor needs to ensure that both marks remain valid and in use.