In its recent preliminary ruling in Case C-12/12, the Court of Justice of European Union (CJEU) ruled that the requirement of genuine use of a trademark may be satisfied when a registered trademark is used only as part of another combination mark.
The request from Bundesgerichtshof (Germany) about the interpretation of the genuine use regimen was made in the proceedings between Colloseum Holding AG (Colloseum) and Levi Strauss & Co (Levi Strauss), concerning a red textile label on the back pocket of a pair of jeans.
Levi Strauss holds both a CTM and a German national trademark with a red textile label on the back pocket as an element. Furthermore, Levi Strauss is the proprietor of the CTM word mark LEVI´S. With reference to its registered trademarks, Levi Strauss brought action against Colloseum requesting, inter alia, an order to prohibit the marketing of jeans with a small rectangular red fabric tag with Colloseum brand names on the back pocket. Colloseum raised a defence alleging lack of genuine use.
According to the findings of the appeal court, Levi Strauss had only used the figurative CTM (a position mark consisting of a blank red textile label on a back pocket) by including the word LEVI´S in the red textile label. Hence, the question arose if the CTM should be considered to have been put to genuine use. Furthermore, the referring court raised the question if the use of the red textile label with the word LEVI´S resulted in the genuine use of both the figurative CTM and the word mark LEVI´S, since the combination of those marks itself had been registered as a German national trademark.
In the preliminary ruling, the CJEU held that the requirement of genuine use is analogous to that concerning the acquisition of distinctive character through use. The CJEU concluded that the requirement of genuine use of a trademark may therefore be satisfied where a registered trademark, which has become distinctive as a result of the use of another combination mark of which it constitutes one element, is used only through that other combination mark, or where it is used only in conjunction with another mark and the combination of those two marks is itself registered as a trademark.