On June 8, the Court of Justice of the European Union (CJ) handed down a ruling (C-689 / 15) on use of an individual brand as a quality seal and the possible nullity or expiration of this type of trademark when the quality of the products and services it identifies is not guaranteed.
The main dispute in which the preliminary questions arise has as one of the parties, Verein Bremer Baumwollbörse (VBB), an association that is dedicated, among others, to the conclusion of license agreements in which the affiliated companies undertake to include the following mark for products made with good quality cotton fibers:
The opposing party, Wolfgang Gözze and WF Gözze Frottierweberei GmbH, a German company that includes, without authorization, a sign similar to the VBB trademark on the labels of the towels it markets:
Given this situation, the Higher Regional Civil and Criminal Court of Düsseldorf raised before the CJ a series of preliminary questions of great interest and relevance.
The first question raised consists of knowing whether an individual EU mark used as a quality seal entails an effective use of the same, therefore entitling the owner of the mark to prohibit third parties from using a similar sign on identical products, for causing risk of consumer confusion.
To the first preliminary question raised, the CJ concludes that There is only effective use of the trademark when it is carried out in accordance with its main function, that is, that the consumer or end user identifies the origin of the marked product or service..
In this way, the TJ clarifies that The use of a trademark as a quality seal by the owner or an authorized third party does not constitute effective use if it does not fulfill the essential function of indicating business origin.. However, if it fulfills this function and in addition, the owner guarantees consumers that said products come from a responsible company under whose control they are manufactured, it would constitute effective use, giving the owner the possibility of prohibiting third parties from using a similar sign. that causes a risk of confusion to the public.
¿Could, therefore, declare the nullity or expiration of an individual brand as a quality seal when the owner does not guarantee the veracity of the claimed quality through controls? No, the TJ affirms that nullity or expiration cannot be declared in such cases, as it is not one of the reasons included by the Regulation no. 207/2009 on the European Union Trademark.
Finally, in response to the preliminary question in which If the provisions relating to collective marks could be applied in this type of situation, the CJ makes a restrictive interpretation of Regulation No. 207/2009, concluding that these provisions cannot be applied to individual EU trademarks, since the Regulation itself expressly links these provisions to collective trademarks.
Through this ruling, the CJ recalls that the main function of the trademark is to indicate the business origin to consumers, so, if this circumstance does not occur, it is irrelevant that there is any other use or accessory function when exercising the rights. exclusive rights granted to trademark owners.
The ruling states that each type of trademark has a purpose or function and its own use requirements.
Currently, and sometimes through licenses, the figure of the individual trademark is being used to avoid more complicated figures – which require compliance with more strict requirements, such as the application being accompanied by the regulations of use – such as collective marks or those of certification or guarantee.
Reading the ruling reveals the need for a thorough review of the criteria that are sometimes followed in practice when opting for the registration of an individual trademark and the granting of licenses for its use as a more convenient alternative to registering a certification, guarantee or collective mark. Additionally, in general, special attention will need to be paid to licensing-based trademark strategies to ensure that use by licensees can be considered effective use of the trademark.
Authors: Rebeca Bonet y Miguel Á. Medina
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