General Court, Decision of 21 June 2012, No. T-514/10, "Fruit of the Loom"; General Court, Decision of 27 September 2012, No. T-39/10, "E.TUCCI"; European Court of Justice, Decision of 25 October 2012, No. C-553/11, "PROTI"

Within just a few months the General Court and the European Court of Justice (CJEU) have issued three remarkable decisions relating to genuine use of a trademark differing from its registered form.

Article 15 (1) (a) Community Trademark Regulation (CTMR) provides that use of a Community trademark in a form differing in elements which do not alter the distinctive character of the mark in its registered form also constitutes use of that mark. In Germany, the parallel provision of Article 26(3) of the German Trademark Act further defines that this "[…] shall also apply if the trademark is also registered in the form in which it has been used."

In "Fruit of the Loom" and "E.TUCCI", the General Court had to consider the use of marks that differed from the registered trademarks. In "PROTI", the CJEU dealt with the question as to whether Article 26 (3) German Trademark Act complies with European trademark law. This had been unclear since the "Bainbridge" decision of the CJEU of 13 September 2007 (No. C-234/06, Il Ponte Finanziaria v. OHIM), where the CJEU had stated it was not possible to extend the protection enjoyed by a trademark to another trademark the use of which had not been established, on the ground that this mark was merely a slight variation of the other (para. 86). The CJEU now rectified this.

"Fruit of the Loom"

This case concerned the question whether use of the trademark FRUIT OF THE LOOM by Fruit of the Loom, Inc. constituted genuine use of the trademark FRUIT.

The Cancellation Division and the Fourth Board of Appeal of the Office for Harmonization of the Internal Market (OHIM) denied this and revoked the registration. The General Court upheld this decision, finding that only FRUIT OF THE LOOM had actually been used. Fruit of the Loom's website www.fruit.com was only used to advertise goods bearing the trademark FRUIT OF THE LOOM, but not FRUIT.

The distinctive character of the trademark FRUIT was altered by the use of FRUIT OF THE LOOM. For English-speaking consumers, the term FRUIT had a precise meaning, whereas FRUIT OF THE LOOM was an expression invented by Fruit of the Loom. The combination of the four words FRUIT OF THE LOOM created a unique expression, altering the distinctive character of the trademark FRUIT.

The court also rejected Fruit of the Loom's argument that registered marks are often used with additional elements (invoking the judgment of the CJEU of 10 June 2010, No. T-482/08, Atlas Transport v. OHIM) as this would have required that Fruit of the Loom had at least proved some use of the trademark FRUIT without additional elements.

"E.TUCCI"

In the E.TUCCI case, the Spanish company El Corte Inglés based an opposition against the word mark application PUCCI on its Spanish trademarks EMIDIO TUCCI and E.TUCCI. However, it only proved use of EMIDIO TUCCI. OHIM's Opposition Division and First Board of Appeal considered that that did not amount to use of E. TUCCI.

The General Court agreed. It based this partly on "Bainbridge", whereby, as mentioned, trademark owners could not maintain two registrations by using one of them. This part of the reasoning must now be considered erroneous on account of the CJEU decision "PROTI" (see below). The General Court, however, also held that the replacement of the first name EMIDIO, highly distinctive in the perception of the Spanish public, with the capital letter "E." constituted a substantial alteration of the distinctive character of the Spanish trademark EMIDIO TUCCI.

"PROTI"

The "PROTI" case was a reference to the CJEU by the German Federal Court of Justice for a preliminary ruling.

The German court had held that use of the trademark PROTI in the form of PROTIPLUS and PROTI POWER did not alter the distinctive character of PROTI. Although PROTIPLUS and PROTI POWER are registered trademarks, their use could nevertheless constitute genuine use of PROTI under Article 26 (3) German Trademark Act. As this provision seemed to contradict the findings of the CJEU in "Bainbridge", the German Federal Court of Justice referred the question to the CJEU whether a mark could be genuinely used under these circumstances.

The CJEU clarified that "Bainbridge" did not contain a general rule that the different form in which a trademark was used could not itself be registered as a trademark. Its ruling in "Bainbridge" had to be seen in the context of the case which concerned a "family" of marks. The enhanced protection by a "family" of marks could only be relied on if several marks were actually used.

The purpose of Article 10(2)(a) of the Trademark Directive (= Article 15(1)(a) CTM Regulation), according to which a trademark can also be genuinely used in variations if they do not alter its distinctive character, is to enable the trademark owner to make certain adaptations to the mark in order to allow better marketing and promotion. That purpose would be jeopardized if, in order to establish use of the registered trademark, a different form in which a mark is used could not be separately registered as a trademark.

Conclusion

The decisions of the General Court in "Fruit of the Loom" and "E. TUCCI" show that use of a trademark in a way which alters its conceptual content or omits a particularly distinctive component, alters the distinctive character of the registered mark.

The decision of the CJEU in "PROTI" is a welcome clarification for trademark owners. In addition, the decision raises expectations that the CJEU will again decide in favor of genuine use in the "Levi Strauss" and "Specsavers" cases, two references currently still pending before the CJEU.[1]