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03.07.2017

CJEU: Mere quality indication insufficient for genuine trademark use

In order to maintain trademark protection, an EU trademark must be used not later than five years after its registration (e. g. Art. 15 EUTMR). Such trademark use must ensure the essential function of the trademark, namely identifying the origin of the product labelled with that mark. In contrast, usages only involving other trademark functions, e. g. guaranteeing the product quality, do not constitute a sufficient use for preserving the trademark, as the CJEU stated in a recent preliminary ruling (order of 8/6/2017 – C-689/15). This applies in particular to marks for quality seals and other similar guarantee signs.

In the case referred to the CJEU, the trademark owner, an association taking account of cotton manufacturers’ and traders’ interests, had to prove sufficient use of its trademark-protected cotton quality seal, being licensed only to its members using exclusively good‑quality cotton fibers. However, such use does not correspond to the function of indicating the origin according to the Court, because the mark is used only to ensure the product composition or quality, but it does not guarantee that the products originate from a single undertaking under whose control they are manufactured or supplied. Only, if the trademark also can guarantee the origin of the cotton products from the trademark owner, then such mark may be considered as genuinely used, which must be further examined by the referring court.

Finding a way out of this dilemma, the recently introduced EU certification mark (see Art. 74a EUTMR) or a so-called collective mark (Art. 66 EUTMR) can provide a mechanism for protecting quality seals or other guarantee signs. In particular, an EU certification mark secures trademark protection for distinguishing products, which are certified by the trademark owner in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, from goods and services, which are not so certified. Although the general provisions regarding genuine use of a trademark also apply to collective and certification marks, and thus the requirement of guaranteeing the identity of origin of the marked products (see Art. 70 and 74e EUTMR). However, the CJEU indicates in its decision that the aspect of guaranteeing a certain product quality might be more relevant for those certification and collective marks when in assessing their genuine use.

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