With a judgment of October 25, 2012 (file no. C-553/11) the Court of Justice of the European Union ("CJEU") provided owners of trademark rights with more security than in the past with respect to modifications to marks. According to the CJEU, the trademark owner is allowed to merely use the current version of his trademark, whereby the "old" trademark will continue to enjoy full protection. The condition is, however, that the distinctive character of the trademark is not altered by the trademark used at present.
In this case, the CJEU stipulated the instances in which it would be permissible for a trademark owner to use currently registered trademarks in a modified form to cover use (and in such instances could prevent revocation of a mark for non-use). The plaintiff argued that the use of his "PROTI" mark satisfied the requirements of "genuine use" as it was a modified use of, and therefore covered by, his registered marks "PROTIPLUS" and "ProtiPower." The Civil Court and the Appellate Court had denied a genuine use of the trademark "PROTI" through the use of these other marks by referring to the CJEU decision Bainbridge (judgment of September 13, 2007; file no. C-234/06), and the fact that section 26 (3) of the German Trademark Act was not compatible with the Directive 2008/95/EC. However, the German Federal Supreme Court doubted the courts’ findings and referred the issue to the CJEU for clarification and guidance.
The CJEU now states that the owner of a registered trademark can claim to prove genuine use by using a trademark in a form differing from the registered mark ("modified form"), provided that this form does not change the distinctive character of the registered trademark. Registration of the modified form is not a decisive factor, as such an exclusion was neither part of the Trademark Directive nor of the Paris Convention for the Protection of Industrial Property (PC). Moreover, the CJEU noted that a trademark owner should have the possibility to be able to make changes to some extent in order to adapt the trademark better "to the needs of marketing and the promotion of the product."
The CJEU explains further that the decision was not in contradiction to its considerations in the Bainbridge decision. In that case, the German plaintiff had claimed the protection of a series of similar trademarks. The necessary proof of such series was not made by the plaintiff, as it had not proven the use of a necessary number of different trademarks of that series. That obiter dictum should be understood especially in this context.
The CJEU therefore takes into account the interest of the trademark owner to adapt valuable old trademarks to the spirit of the time and to make small changes without losing the priority of the old "out-of-use" trademark. The judgment of the CJEU leads to more clarity and security and trademark owners can breathe a sigh and register modern forms of a traditional trademark without worrying about effects with regard to the protection of the "old" trademarks.
We assume that the CJEU will continue to build on this judgment in the proceedings Stofffaehnchen II (German Federal Court, decision of November 24, 2011, file no. I ZR 206/10) and Specsavers (Court of Appeal, London; file no. before the CJEU: C-252/12) with regard to the combined use of a word with a figurative mark.