Colloseum and composite marks: a genuine ruling from the Court of Justice

Mark 3

Not even the inconvenience of a remote cable fault that knocked out this Kat's broadband and phone services today could deter him from his dogged pursuit of Case C‑12/12, today's choice intellectual property ruling from the Court of Justice of the European Union on a reference for a preliminary ruling from the German Bundesgerichtshof. Yes, indeed, it's time to take a look at Colloseum Holding AG v Levi Strauss & Co.

Mark 6

So what's this case about? It involves Levi Strauss ("the proprietor of several trade marks", as the court notes with some understatement, "and, in particular, of what the judgment calls "Mark 3", the Community word mark LEVI’S, amongst others, for articles of clothing, and of the German word and figurative mark No DD 641 687, registered on 12 January 1977, for trousers, shirts, blouses and jackets for men, women and children ...", which appears on the right.  The same company also owned "Mark 6". This was "the coloured Community figurative mark No 2 292 373, in red and blue, registered on 10 February 2005 for trousers ... [which] ... is a position mark and consists of a rectangular red label, made of textile, sewn into and protruding from the upper part of the left-hand seam of the rear pocket of trousers, shorts or skirts". You can see it on the left. The registry entry for this mark contained a disclaimer to the effect that the mark did not create any exclusive right to the shape and colour of the pocket per se.

Colloseum, a retailer of outerwear, started to sell jeans under the trade marks COLLOSEUM, S. MALIK and EURGIULIO. Those trousers had small rectangular red fabric tags, on which appeared the relevant brands or the word ‘SM JEANS’, sewn into the upper part of the outer right seam of the right rear pocket. Levi Strauss sued for trade mark infringement, seeking injunctive relief against Collloseum offering or marketing such trousers or stocking them for those purposes. Colloseum objected that it had never used Mark 6 at all.

Things started well for Levi Strauss; its application for injunctive relief was granted and and an appeal dismissed. Colloseum then appealed further on a point of law to the Bundesgerichtshof, which set aside the appeal court’s decision and remitted the case for further consideration. The appeal court again dismissed Colloseum’s appeal, so Colloseum appealed again.

This time,the Bundesgerichtshof noted that the outcome of the second appeal turned on the interpretation of Article 15(1) of Regulation 40/94 [which was repealed and re-enacted as Regulation 207/2009 over four years ago, but never mind]. That court thought that there would be a likelihood of confusion, on the basis of Article 9(1)(b) of Regulation No 40/94, between mark No 6 and the trouser styles marketed by Colloseum, should mark No 6 still be valid. But the big issue was this: had Mark 6 been put to genuine use within the meaning of Article 15(1)? That provision states:

"If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use".

Said the Bundesgerichtshof, since Mark 6 was registered on 10 February 2005, it might be open to be revoked if it had not been put to genuine use before the end of the appeal court hearing on 18 February 2010. The problem on the ground was that Levi Strauss had, according to the findings of the appeal court, used Mark 6 only in the form of Mark 3. The court added that the two marks did not differ from each other only in elements which did not alter their distinctive character, so this was not a case in which to apply Article 15(2)(a), which counts use of a mark that is only trivially different from the registered mark as being use of that mark [a principle discussed in Case C‑553/11 Rintisch, noted here by the IPKat] applied. Even more of a headache was the plausible notion that Levi Strauss's use of the rectangular red tag with the word ‘LEVI’S’, when marketing trousers, resulted in genuine use of both Mark 6 and the word mark LEVI’S, since the combination of those two marks had itself been registered as Mark 3. Germany's finest court therefore decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘Is Article 15(1) of Regulation 40/94 to be interpreted as meaning that:

1. a trade mark which is part of a composite mark and has become distinctive only as a result of the use of the composite mark can be used in such a way as to preserve the rights attached to it if the composite mark alone is used?

2. a trade mark is being used in such a way as to preserve the rights attached to it if it is used only together with another mark, the public sees independent signs in the two marks and, in addition, both marks are registered together as a trade mark?’

The Court of Justice made quite short work of this reference. Said the Court, distinctiveness of a mark means that the mark serves to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings, its essential function being to identify, in the eyes of consumers, the undertaking of origin of the goods. As for the acquisition of distinctive character, this may result both (i) from the use, as part of a registered trade mark, of a component of it and (ii) from the use of a separate mark in conjunction with a registered trade mark. In each cases, as we know from Case C‑353/03 Nestlé, it's only necessary to show that, in consequence of such use, the relevant class of persons actually perceives the goods or service, designated exclusively by that mark, as originating from a given undertaking.

This being so, it doesn't matter whether the sign is used as part of a registered trade mark or in conjunction with the registered trade mark: all that matters that, as a consequence of that use, the sign in question serves to identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking. The same principle governs issues of genuine use. Accordingly,

"The condition of genuine use of a trade mark, within the meaning of Article 15(1) ... may be 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 those two marks is, furthermore, itself registered as a trade mark".

The IPKat knew this was going to be an easy ruling when the Court dispensed with the need for an Advocate General's Opinion, and he feels a little sad that a question which, when viewed from a sensible commercial perspective, has to go backwards and forwards between national and European courts like a shuttlecock in order to get an answer which is blindingly obvious.  Merpel wonders what use would have been served by a modern, user-friendly and pro-commerce trade mark system that reached the opposite view.

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