Case T‑253/17
Der Grüne Punkt — Duales System Deutschland GmbH
v
European Union Intellectual Property Office
(EU trade mark — Revocation proceedings — EU collective figurative mark representing a circle with two arrows — Genuine use of the mark — Partial revocation — Declaration of partial revocation — Article 15 (1) of Regulation (EC) No 207/2009 (now Article 18 (1) of Regulation (EU) 2017/1001) — Article 51 (1) (a) of Regulation No 207/2009 (now Article 58 (1) (a) of Regulation 2017/1001) — Rule 22(4) of Regulation (EC) No 2868/95 (now Article 10(4) of Delegated Regulation (EU) 2018/625) — Affixing of the mark on packaging — Perception of the relevant public)
Summary — Judgment of the General Court (Fourth Chamber), 12 December 2018
EU trade mark — Surrender, revocation and invalidity — Causes of revocation — No genuine use of the mark — Proof of use of the earlier mark — Genuine use — Definition — Criteria for assessment — Collective mark
(Council Regulation No 207/2009, Arts 15 (1) and 51 (1) (a))
EU trade mark — Surrender, revocation and invalidity — Causes of revocation — No genuine use of the mark — Proof of use of the earlier mark — Partial use — Effect — Concept of ‘part of the goods or services’ covered by the registration
(Council Regulation No 207/2009, Arts 15 (1) and 51 (1) (a))
EU trade mark — Surrender, revocation and invalidity — Causes of revocation — No genuine use of the mark — Proof of use of the earlier mark — Genuine use — Definition — Criteria for assessment — Presentation of the packaging — Perception of the relevant public
(Council Regulation No 207/2009, Arts 15 (1) and 51 (1) (a); Regulation No 2868/95, Art. 1, rule 22(4))
EU trade mark — Surrender, revocation and invalidity — Causes of revocation — No genuine use of the mark — Collective figurative mark representing a circle with two arrows
(Council Regulation No 207/2009, Arts 15 (1) and 51 (1) (a))
As is apparent from the case-law, there is genuine use of a trade mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. In this respect, it should be noted that, similarly, the essential function of an EU collective mark is to distinguish the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings.
In the assessment as to whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark in the course of trade is real, particularly whether such use is viewed as warranted in the economic sector concerned in order to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark.
Moreover, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned. An overall assessment must be made, taking into account all the relevant factors of the particular case and implying some interdependence between the factors taken into account.
(see paras 26-28)
See the text of the decision.
(see para. 29)
See the text of the decision.
(see paras 34, 35)
See the text of the decision.
(see paras 36-46)