Court of Justice of the European Communities (including Court of First Instance Decisions)

Case C‑143/19 P

Der Grüne Punkt — Duales System Deutschland GmbH

v

European Union Intellectual Property Office (EUIPO)

 Judgment of the Court (Fifth Chamber), 12 December 2019

(Appeal — EU trade mark — Regulation (EC) No 207/2009 — Articles 15 and 66 — Genuine use of an EU collective trade mark — Mark concerning a system of collection and recovery of packaging waste — Affixing to the packaging of goods for which the mark is registered)

1.        EU trade mark — EU collective marks — Essential function — Distinction of goods or services of the members of the association which is the proprietor of that mark from those of other undertakings

(Council Regulation No 207/2009, Art. 66)

(see paragraphs 52-54)

2.        EU trade mark — Surrender, revocation and invalidity — Causes of revocation — No genuine use of the trade mark — Proof of use of the earlier mark — Genuine use — Concept — Criteria for assessment — Collective mark

(Council Regulation No 207/2009, Arts 15(1) and 51(1)(a))

(see paragraphs 55-58, 62, 72, 73)

3.        EU trade mark — Surrender, revocation and invalidity — Causes of revocation — No genuine use of the trade mark — Collective figurative mark representing a circle with two arrows concerning a system of collection and recovery of packaging waste

(Council Regulation No 207/2009, Arts 15(1) and 51(1)(a))

(see paragraphs 67-70)

Résumé

Collective mark concerning a system of collection of packaging waste and affixed to product packaging may be put to genuine use for packaged goods

By the judgment in Der Grüne Punkt v EUIPO (C‑143/19 P), delivered on 12 December 2019, the Court of Justice set aside the General Court’s judgment (1) for having erred in law in applying the concept of ‘genuine use’ to an EU collective trade mark.

In the present case, the appellant, Der Grüne Punkt, had obtained registration of the collective figurative mark representing a circle with two arrows concerning a system of collection and recovery of packaging waste. Following an application for revocation, the European Union Intellectual Property Office (EUIPO) partially upheld that application, on the ground that that trade mark had not been put to genuine use for all the goods for which it had been registered, with the exception of goods consisting of packaging.

The action for annulment against the decision of the Board of Appeal of EUIPO brought by the appellant was dismissed by the General Court.

In support of its appeal, the appellant claimed that the General Court misinterpreted the concept of ‘genuine use’ within the meaning of Article 15(1) of Regulation No 207/2009 (2) and had failed to take proper account of the characteristics of collective marks set out in Article 66 of that regulation.

First of all, the Court of Justice observed that the essential function of a collective mark is to distinguish goods or services of the members of the association which is the proprietor of that mark from those of other undertakings. Thus, unlike an individual mark, a collective mark does not have the function of indicating to the consumer ‘the identity of origin’ of goods or services in respect of which it is registered. In that regard, the Court noted that Article 66 of Regulation No 207/2009 by no means requires that manufacturers, producers, suppliers or traders who are affiliated with the association which is the proprietor of a collective mark, form part of the same group of companies which manufacture or supply the goods or services under unitary control. Furthermore, the Court held that collective marks are, like individual marks, part of the course of trade. Their use must therefore, in order to be classified as ‘genuine’ within the meaning of Article 15(1) of Regulation No 207/2009, in fact be part of the objective of the undertakings concerned to create or preserve an outlet for their goods or services.

Next, the Court of Justice held that such a mark is used in accordance with its essential function from the moment when it enables the consumer to understand that the goods or services covered originate from undertakings which are affiliated with the association, the proprietor of the mark, and to thereby distinguish those goods or services from those originating from undertakings which are not affiliated. In the present case, the Court of Justice held that it is clear from the findings made by the General Court that the collective mark was used in accordance with its essential function, in view of the fact that the producer or distributor of the goods at issue was part of the appellant’s licensing system.

Finally, the Court of Justice held that the assessment of genuine use of the mark at issue should be carried out by evaluating, particularly, whether such use is viewed as warranted in the economic sector concerned 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. In this respect, the Court of Justice found that the General Court had failed to apply those criteria to the present case. The Court of Justice held in particular that it was for the General Court to examine whether the use properly established in this case, namely the affixing of the mark at issue to the packaging of the goods of undertakings affiliated with a local collection system and of environmentally sound disposal, was viewed, in the economic sector concerned, as warranted to maintain or create a share in the market for the goods. According to the Court of Justice, it cannot be ruled out that the indication, by a manufacturer or a distributor on the packaging of everyday consumer goods, of the affiliation with such an environmentally sound system may influence consumers’ purchasing decisions and, thus, contribute to the maintenance or creation of a share in the market relating to those goods.

Taking the view that the General Court had erred in law in its application of the concept of ‘genuine use’, the Court of Justice set aside the judgment under appeal and annulled the decision of the Board of Appeal of EUIPO.

1      Judgment of 12 December 2018, Der Grüne Punkt v EUIPO Halston Properties (Representation of a circle with two arrows) (T‑253/17, EU:T:2018:909).

2      Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1).

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