A registered trademark acquires full protection if it is put to actual and genuine use within five years after its registration in connection with the goods and services in respect of which it is registered. It gets complicated if, over the years, the trademark being put to use has been varied or amended with further elements compared to the original form of registration. According to the relevant rules of the trademark law, a genuine use has to be assumed if the form of use only differs in components which do not influence the distinctiveness of the trademark (cf. Art. 15 (1) lit. a) CTMR, § 26 (3) sentence 1 German Trademark Act).
In this context The ECJ has ruled some time ago that this rule shall not be applied if the trademark deviating from the original trademark is also registered (judgment of 13/9/2007 – C-234/06 P, ref. 86 – “Bainbridge”). The rules concerning the genuine use of trademarks differing from the actual registration do not allow extending the use of a registered trademark to another registered trademark being slightly modified and for which the use is not proven.
With said judgment, the ECJ, however, contradicted to the German rules of use to some extent. According to the German rules of use, a genuine use of a registered trademark is at hand if the deviating trademark being used is also registered (cf. § 26 (3) sentence 2 German Trademark Act). Therefore, it only was a matter of time for the BGH (German Federal Court of Justice) when to refer for a preliminary ruling the question whether the German rules of use comply with the conditions of the “Bainbridge” case law (BGH, decision of 17/8/2011 – I ZR 84/09 – PROTI). In the referral proceedings the question has come up whether the word mark “PROTIPLUS” and the word/figurative mark “PROTIPOWER” is able to establish genuine use for the word mark “PROTI”.
The ECJ has, now, answered this question with its judgment of 25/10/2012 (C-553/11 – PROTI). According to the Court, the owner of a trademark can also plead genuine use with a trademark differing from the registration if the differences between the registered and used form of the trademark do not alter the distinctive character of the trademark, regardless whether that different form is itself registered as a trademark. The ECJ has, further, clarified that the considerations made in its “Bainbridge”-judgment only apply to the proof of use for so called trademark families and serial signs (trademarks having common characterizing features), respectively. Concerning trademark families, it is necessary to prove the existence of such family (cf. judgment of 13/9/2007 – C-234/06 P, ref. 64 f.), therefore, the proof of use for a trademark family depends on the actual use of each single trademark which cannot be produced by equivalent forms of the trademark as defined by Art. 15 (1) lit. a) CTMR or § 26 (3) sentence 1 German Trademark Act.
According to the clarification of the ECJ, the use of a trademark can sustain its rights if the differences between the form being used and the registered form only comprise modifications. However, it still depends on each individual case whether those differences influence the distinctive character of the trademarks. Thus, the BGH now has to decide whether the modifications of “PROTIPLUS” and “PROTIPOWER” influence the distinctive character of the component “PROTI”. Though, after the present judgment of the ECJ the establishment of a likelihood of confusion on the basis of a trademark family remains problematic. Although such a trademark family, in general, eases to establish a likelihood of confusion the owner of the trademark family has to prove that every relevant trademark of the family is genuinely present on the market in its registered form.