Australian brand owners that have registered trademarks in Europe must heed a recent decision on the continuing requirement of trade mark use.

We all know that it is a requirement that registered trade marks be put to use, otherwise they can be removed.

The issue of whether a mark has been put to genuine use is often a tricky one, taking in issues such as the form in which the mark has been used and the extent to which the mark has been used against the goods/services covered in the specification.

The issue regarding the form of the mark used in particular seems to trouble the courts. This commonly happens when a mark is registered in one form, but is used in that form, together with another mark or as part of a complex mark.

Is this the use of one single trade mark, or is this the use of a number of marks all at the same time? The answer is critical as it will often determine whether a registered mark should be maintained, or whether it should be removed for non-use.

We have a recent ruling from Europe’s highest court clarifying the position in this regard.

Put simply, the issue in the proceedings was whether the use of Levi’s well known red tab mark containing the word LEVI’S (shown below left, the subject of a separate registration), accrued to the benefit of Levi Strauss’ registration for its red tab mark that did not contain the word LEVI’S. That is, could the non-verbal mark withstand a non-use challenge:

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Levi Strauss sought to enjoin the use of a red tab by Coloseum on its jeans in Germany.

The issue referred to the Court of Justice related to whether the use of the LEVI’S label mark constituted use of the non-verbal mark. This was not a case in which Levi Strauss could rely on the differences between the two marks being insubstantial, as LEVI’S is clearly a distinctive element of the mark as used.

Nevertheless, it was held that genuine use can be established 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 those two marks is, furthermore, itself registered as a trade mark.”

The decision is important for Australian brand owners that have sought protection of their own marks in Europe. To the extent that such marks have become potentially vulnerable to attack for non-use (due to having been registered for 5 years for more), or that are subject to the proof of use provisions, the decision of the Court of Justice can assist in circumstances where the mark as used in the EU is only part of a registered mark. But that is not the end of the matter. The brand owner will still need to demonstrate that the mark the subject of the registration has become distinctive, which is by no means an easy task.

For Australian brand owners with a portfolio of marks in Europe, the decision provides a reminder of the continuing requirement of use, and brand owners should be auditing their portfolios to check whether the way in which they use their marks corresponds to the registered form of the mark, or to assess whether the individual components of complex marks have become distinctive with time. In that case, there is likely to still be benefit in separately protecting those components.

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