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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> W. F. Gozze Frottierweberei and Gozze (Intellectual property - EU trade mark : Judgment) [2017] EUECJ C-689/15 (08 June 2017) URL: https://www.bailii.org/eu/cases/EUECJ/2017/C68915.html Cite as: ECLI:EU:C:2017:434, EU:C:2017:434, [2017] EUECJ C-689/15, [2017] Bus LR 1795, [2017] WLR(D) 381 |
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JUDGMENT OF THE COURT
(Second
Chamber)
class="C19Centre">8
June 2017 (*)
(Reference for
a preliminary ruling - Intellectual property - EU trade mark - Regulation (EC) No 207/2009 - Articles 9 and 15 -
Filing
of the
cotton
flower
sign by an association - Registration as an individual trade mark - Licences to use the mark granted to
cotton
textile manufacturers affiliated
with
the association - Application
for
a
declaration
of invalidity or revocation -
Concept
of ‘genuine use’ - Essential
function
of indicating origin)
class="C02AlineaAltA">REQUEST
for
a preliminary ruling under Article 267 TFEU
from
the Oberlandesgericht
Düsseldorf
(Higher Regional
Court,
Düsseldorf,
Germany), made by
decision
of 15
December
2015, received at the
Court
on 21
December
2015, in the proceedings
W.F. Gözze Frottierweberei
GmbH,
Wolfgang Gözze
v
Verein Bremer Baumwollbörse,
class="C02AlineaAltA">composed
of M. Ilešič (Rapporteur), President of the
Chamber,
A. Prechal, A. Rosas,
C.
Toader and E. Jarašiūnas, Judges,
Advocate General: M. Wathelet,
class="C02AlineaAltA">Registrar:
X. Lopez Bancalari, Administrator,
having regard to the written
procedure and
further
to the hearing on 19 October 2016,
after considering
the observations submitted on behalf of:
- W.F.
Gözze
Frottierweberei
GmbH and Mr Gözze, by M. Hermans and I. Heß, Rechtsanwältinnen,
- Verein Bremer Baumwollbörse, by C.
Opatz, Rechtsanwalt,
- the German Government, by M. Hellmann, T. Henze and J. Techert, acting as Agents,
- the European Commission,
by T. Scharf and J. Samnadda, acting as Agents,
after hearing the Opinion of the Advocate General at the sitting on 1 December
2016,
gives the following
class="C75Debutdesmotifs">Judgment
class="C01PointnumeroteAltN">
NAME="point1">1 This request
for
a preliminary ruling
concerns
the interpretation of
Council
Regulation (EC) No 207/2009 of 26
February
2009 on the European Union trade mark (OJ 2009 L 78, p. 1).
2 The request was
made in proceedings between
W.F.
Gözze
Frottierweberei
GmbH (‘Gözze’) and Mr
Wolfgang
Gözze and Verein Bremer Baumwollbörse (‘the VBB’)
concerning,
first,
the use by Gözze of a sign similar to an EU trade mark of
which
the VBB is the proprietor and, secondly, the existence of genuine use of that mark.
Legal context
class="C01PointnumeroteAltN">
NAME="point3">3 Regulation No 207/2009
was
amended by Regulation (EU) 2015/2424 of the European Parliament and of the
Council
of 16
December
2015 (OJ 2015 L 341, p. 21),
which
entered into
force
on 23 March 2016. However, given the
date
of the
facts
in the main proceedings, this reference
for
a preliminary ruling must be examined in the light of Regulation No 207/2009 as it applied prior to that amendment.
4 Article 4 of that regulation provides:
‘A[n EU] trade mark may consist
of any signs
capable
of being represented graphically, particularly
words,
including personal names,
designs,
letters, numerals, the shape of goods or of their packaging, provided that such signs are
capable
of
distinguishing
the goods or services of one undertaking
from
those of other undertakings.’
5 Article 7(1) of that regulation provides:
‘The following
shall not be registered:
(a) signs which
do
not
conform
to the requirements of Article 4;
(b) trade marks which
are
devoid
of any
distinctive
character;
class="C09Marge0avecretrait">(c)
trade marks
which
consist
exclusively of signs or indications
which
may serve, in trade, to
designate
the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other
characteristics
of the goods or services.
(d) trade marks consisting
exclusively of signs or indications
which
have become
customary
in the
current
language or in the bona
fide
and established practices of the trade;
…
(g) trade marks which
are of such a nature as to
deceive
the public,
for
instance as to the nature, quality or geographical origin of the goods or service;
… ’.
6 According to Article 9(1) of that regulation:
‘A[n EU] trade mark shall confer
on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his
consent
from
using in the
course
of trade:
(a) any sign which
is identical
with
the [EU] trade mark in relation to goods or services
which
are identical
with
those
for
which
the [EU] trade mark is registered;
(b) any sign where,
because of its identity
with,
or similarity to, the [EU] trade mark and the identity or similarity of the goods or services
covered
by the [EU] trade mark and the sign, there exists a likelihood of
confusion
on the part of the public; the likelihood of
confusion
includes the likelihood of association between the sign and the trade mark;
… ’
7 Article 15 of Regulation No 207/2009 provides:
‘1. If, within
a period of
five
years
following
registration, the proprietor has not put the [EU] trade mark to genuine use in the [European Union] in
connection
with
the goods or services in respect of
which
it is registered, or if such use has been suspended
during
an uninterrupted period of
five
years, the [EU] trade mark shall be subject to the sanctions provided
for
in this Regulation, unless there are proper reasons
for
non-use.
...
2. Use of the [EU] trade mark with
the
consent
of the proprietor shall be
deemed
to
constitute
use by the proprietor.’
8 Article 22(1) of that regulation provides:
‘[An EU] trade mark may be licensed for
some or all of the goods or services
for
which
it is registered and
for
the
whole
or part of the [European Union]. … ’
9 According to Article 51(1) of that regulation:
‘The rights of the proprietor of the [EU] trade mark shall be declared
to be revoked on application to the [European Union Intellectual Property Office (EUIPO)] or on the basis of a
counterclaim
in infringement proceedings:
(a) if, within
a
continuous
period of
five
years, the trade mark has not been put to genuine use in the [European Union] in
connection
with
the goods or services in respect of
which
it is registered, and there are no proper reasons
for
non-use … ;
(b) if, in consequence
of acts or inactivity of the proprietor, the trade mark has become the
common
name in the trade
for
a product or service in respect of
which
it is registered;
(c) if, in consequence
of the use made of it by the proprietor of the trade mark or
with
his
consent
in respect of the goods or services
for
which
it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.’
10 Article 52(1) of that regulation states:
‘A[n EU] trade mark shall be declared
invalid on application to [EUIPO] or on the basis of a
counterclaim
in infringement proceedings,
(a) where
the [EU] trade mark has been registered
contrary
to the provisions of Article 7;
… ’
11 Article 66 of Regulation No 207/2009 provides:
‘1. A [European Union] collective
mark shall be a [European Union] trade mark
which
is
described
as such
when
the mark is applied
for
and is
capable
of
distinguishing
the goods or services of the members of the association
which
is the proprietor of the mark
from
those of other undertakings. …
2. In derogation
from
Article 7(1)(
c),
signs or indications
which
may serve, in trade, to
designate
the geographical origin of the goods or services may
constitute
[European Union]
collective
marks
within
the meaning of paragraph 1. A
collective
mark shall not entitle the proprietor to prohibit a third party
from
using in the
course
of trade such signs or indications, provided he uses them in accordance
with
honest practices in industrial or
commercial
matters; in particular, such a mark may not be invoked against a third party
who
is entitled to use a geographical name.
3. The provisions of this Regulation shall apply to [European Union] collective
marks, unless Articles 67 to 74 provide otherwise.’
12 Article 67 of that regulation provides:
‘1. An applicant for
a [European Union]
collective
mark must submit regulations governing its use
within
the period prescribed.
2. The regulations governing use shall specify the persons authorised to use the mark, the conditions
of membership of the association and,
where
they exist, the
conditions
of use of the mark, including sanctions. The regulations governing use of a mark referred to in Article 66(2) must authorise any person
whose
goods or services originate in the geographical area
concerned
to become a member of the association
which
is the proprietor of the mark.
… ’
13 Article 71 of that regulation provides:
‘1. The proprietor of a [European Union] collective
mark shall submit to [EUIPO] any amended regulations governing use.
2. The amendment shall not be mentioned in the Register if the amended regulations do
not satisfy the requirements of Article 67 or involve one of the grounds
for
refusal …
… ’
14 Article 73 of that regulation provides:
‘Apart from
the grounds
for
revocation provided
for
in Article 51, the rights of the proprietor of a[n EU]
collective
mark shall be revoked on application to [EUIPO] or on the basis of a
counterclaim
in infringement proceedings, if:
(a) the proprietor does
not take reasonable steps to prevent the mark being used in a manner incompatible
with
the
conditions
of use,
where
these exist, laid
down
in the regulations governing use, amendments to
which
have,
where
appropriate, been mentioned in the Register;
…
(c) an amendment to the regulations governing use of the mark has been mentioned in the Register in breach of the provisions of Article 71(2), unless the proprietor of the mark, by further
amending the regulations governing use,
complies
with
the requirements of those provisions.’
15 The version of Regulation No 207/2009 resulting from
Regulation No 2015/2424 includes a new section entitled ‘EU
certification
marks’,
comprising
Articles 74a to 74k of Regulation No 207/2009.
16 Article 74a provides:
‘1. An EU certification
mark shall be an EU trade mark
which
is
described
as such
when
the mark is applied
for
and is
capable
of
distinguishing
goods or services
which
are
certified
by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other
characteristics,
with
the exception of geographical origin,
from
goods and services
which
are not so
certified.
class="C02AlineaAltA">2.
Any natural or legal person, including institutions, authorities and bodies governed by public law, may apply
for
EU
certification
marks provided that such person
does
not
carry
on a business involving the supply of goods or services of the kind
certified.
17 Pursuant to Article 4 of Regulation No 2015/2424, the provisions referred to in paragraphs 15 and 16 of the present judgment will
apply as
from
1 October 2017.
The dispute
in the main proceedings and the questions referred
for
a preliminary ruling
18 The VBB is an association exercising various activities linked to cotton.
It is the proprietor of the
following
EU
figurative
trade mark, registered on 22 May 2008
for
goods, in particular
for
textiles (‘the
cotton
flower
mark’):
19 It is apparent from
the
file
submitted to the
Court
and the explanations provided at the hearing that,
for
several
decades
preceding that registration, that
figurative
sign (‘the
cotton
flower
sign’) had been used by manufacturers of textiles made
from
cotton
fibres
to
certify
the
composition
and the quality of their goods.
20 Since the registration, the VBB has concluded
licence agreements in respect of its
cotton
flower
mark
with
undertakings affiliated to the association. Those undertakings agree to use the mark only
for
goods made
from
good-quality
cotton
fibres.
Compliance
with
this
commitment
may be
checked
by the VBB.
21 Gözze, the director
of
which
is Mr Gözze,
which
is not affiliated to the VBB and has not
concluded
a licence agreement
with
it, manufactures textiles made
from
cotton
fibres
and has affixed the
cotton
flower
sign to them
for
several
decades.
class="C01PointnumeroteAltN">
NAME="point22">22 On 11
February
2014, the VBB brought infringement proceedings against Gözze and Mr Gözze before the
competent
EU trade mark
court,
the Landgericht
Düsseldorf
(Regional
Court,
Düsseldorf,
Germany) as a result of Gözze selling towels to
which
hangtags are attached, the back of
which
is reproduced below:
23 In the course
of those proceedings, Gözze brought a
counterclaim
on 14 April 2014
for
a
declaration
of invalidity of the
cotton
flower
mark as
from
22 May 2008 or, in the alternative,
for
revocation of the mark as
from
23 May 2013.
24 It claims
that the
cotton
flower
sign is purely
descriptive
and thus not
distinctive.
The sign
cannot
be used as an indication of origin, has not been put,
within
the time period referred to in Article 15 of Regulation No 207/2009, to genuine use by the VBB or its licensees and should not, in any event, have been registered as a trade mark.
25 By judgment of 19 November 2014, the Landgericht Düsseldorf
(Regional
Court,
Düsseldorf)
upheld the VBB’s action and
dismissed
Gözze’s
counterclaim.
class="C01PointnumeroteAltN">
NAME="point26">26 It held that the sign at issue may serve as an indication of origin.
Furthermore,
having regard to the high
degree
of similarity between the
cotton
flower
sign used on Gözze’s labels and the VBB’s
cotton
flower
mark, there
was
a likelihood of
confusion
within
the meaning of Article 9(1)(b) of Regulation No 207/2009.
27 Gözze brought an appeal against that decision
before the Oberlandesgericht
Düsseldorf
(Higher Regional
Court,
Düsseldorf,
Germany).
28 The latter court
shares the
finding
of the
first
judge that there is a high
degree
of similarity between the
cotton
flower
sign affixed by Gözze to its goods and the VBB’s
cotton
flower
mark since it is
distinguished
only by the
colour
in
which
Gözze normally prints it.
29 However, it held that Gözze’s use of the cotton
flower
sign
for
identical goods
did
not necessarily mean that the infringement proceedings brought by the VBB
were
well
founded.
That sign and the
cotton
flower
mark
would
be perceived by the public
first
and
foremost
as a ‘label of quality’. In those
circumstances,
the use of the sign and of the
cotton
flower
mark
could
be viewed as not
conveying
any message as to the origin of the goods. This may lead to the
conclusion,
first,
that the VBB should have its rights in the
cotton
flower
mark revoked
for
lack of ‘genuine use’
within
the meaning of Article 15(1) of Regulation No 207/2009 and, secondly, that Gözze
did
not
commit
any infringement.
30 Moreover, the Oberlandesgericht Düsseldorf
(Higher Regional
Court,
Düsseldorf)
raised the question
whether,
in
circumstances
such as those in the main proceedings, the mark must be
deemed
to be of such a nature as to
deceive
the public,
within
the meaning of Article 7(1)(g) of the regulation. In the present
case,
the VBB
controls
only exceptionally the quality of the goods offered
for
sale by its licensees.
31 That court
takes the view,
finally,
that it might be possible, in an appropriate
case,
to liken the use of an individual EU trade mark such as the
cotton
flower
mark to the use of a
collective
EU trade mark. That
would
make it possible to
consider,
on the basis of the principles applicable to
collective
trade marks, that affixing such a mark on goods serves as an indication of origin,
where
the public associates it
with
the expectation of quality
control
carried
out by the proprietor of the mark. If that reasoning
were
to be
followed
by the
Court
of Justice, it
could,
subsequently, be possible to apply, by analogy, Article 73(a) of Regulation No 207/2009, according to
which
the rights of the proprietor of such a mark must be
declared
to be revoked if he
does
not take reasonable steps to prevent use of the mark in a manner incompatible
with
the
conditions
of use as laid
down
in the regulations governing use.
32 In those circumstances,
the Oberlandesgericht
Düsseldorf
(Higher Regional
Court,
Düsseldorf)
decided
to stay the proceedings and to refer the
following
questions to the
Court
of Justice
for
a preliminary ruling:
‘(1) Can
the use of an individual mark as a label of quality
constitute,
in relation to the goods
for
which
it is used, use as a trade mark
for
the purposes of Articles 9(1) and 15(1) of Regulation No 207/2009?
(2) If Question 1 is to be answered in the affirmative: is such a mark to be declared
invalid, in accordance
with
Article 52(1)(a) in
conjunction
with
Article 7(1)(g) of Regulation No 207/2009, or to be revoked, in accordance
with
a mutatis mutandis application of Article 73(
c)
of that regulation, if the proprietor of the mark
fails
to ensure that expectations in trade relating to the quality associated
with
the sign are being met by
carrying
out periodic quality
controls
at its licensees?’
Consideration
of the questions referred
Question 1
33 By its first
question, the referring
court
asks, in essence,
whether
Article 15(1) of Regulation No 207/2009 is to be interpreted as meaning that the affixing of an individual EU trade mark, by the proprietor or
with
his
consent,
on goods as a label of quality is a use as a trade mark that
falls
under the
concept
of ‘genuine use’
within
the meaning of that provision,
with
the result that the proprietor of that mark is entitled to prevent, pursuant to Article 9(1)(b) of that regulation, the affixing by a third party of a similar sign on identical goods
where
there is a likelihood of
confusion
as referred to in the latter provision.
34 As regards Article 9(1)(b) of Regulation No 207/2009, it is absolutely clear
from
that provision that, in a
case
such as that in the main proceedings, in
which
it is undisputed that the third party, namely Gözze, is using in the
course
of trade,
without
the
consent
of the proprietor of the mark, a sign
which
is similar to that mark
for
identical goods, the proprietor is entitled to prevent that use if it
creates
a likelihood of
confusion
on the part of the public.
35 That is the case
where
the public is likely to believe that the goods or services
designated
by the sign used by the third party and those
designated
by the mark
come
from
the same undertaking or, as the
case
may be,
from
economically linked undertakings (see, inter alia, judgments of 6 October 2005, Medion,
C-120/04,
EU:
C:2005:594,
paragraph 26; of 10 April 2008, adidas and adidas Benelux,
C-102/07,
EU:
C:2008:217,
paragraph 28; and of 25 March 2010, BergSpechte,
C-278/08,
EU:
C:2010:163,
paragraph 38).
36 In the light of the high degree
of similarity between the
cotton
flower
sign affixed to the
cotton
textiles offered
for
sale by Gözze and the
cotton
flower
mark affixed to those offered
for
sale by the VBB’s licensees, the referring
court
has already held in its order
for
reference that there is a likelihood of
confusion
between the sign and the mark. However, the referring
court
raises the question
whether,
on account of the absence of any ‘genuine use’
within
the meaning of Article 15(1) of Regulation No 207/2009, the VBB may no longer rely on the mark. In that
case,
the referring
court
would
consider
upholding the
counterclaim
filed
by Gözze seeking the revocation of the
cotton
flower
mark.
37 As regards Article 15(1), it is settled case-law
that there is ‘genuine use’ of a trade mark,
within
the meaning of that provision,
where
the mark is used in accordance
with
its essential
function,
which
is to guarantee the identity of 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 (see, inter alia, judgments of 11 March 2003, Ansul,
C-40/01,
EU:
C:2003:145,
paragraph 43; of 13 September 2007, Il Ponte
Finanziaria
v OHIM,
C-234/06
P, EU:
C:2007:514,
paragraph 72; and of 19
December
2012, Leno Merken,
C-149/11,
EU:
C:2012:816,
paragraph 29).
38 In the present case,
it is
common
ground that the affixing, by the VBB’s licensees, of the
cotton
flower
mark on their goods is
done
in order to
create
or preserve an outlet
for
those goods.
39 However, the fact
that a mark is used in order to
create
or preserve an outlet
for
the goods or services
for
which
it is registered and not
for
the sole purpose of preserving the rights
conferred
by the mark is not sufficient to
conclude
that there is a ‘genuine use’
within
the meaning of Article 15(1) of Regulation No 207/2009.
40 As the Court
of Justice held in the
case-law
referred to in paragraph 37 of the present judgment, it is equally indispensable that the mark be used in accordance
with
its essential
function.
41 As regards individual marks, the essential function
is to guarantee the identity of origin of the marked goods or services to the
consumer
or end user by enabling him,
without
any possibility of
confusion,
to
distinguish
the goods or services
from
others
which
have another origin.
For
the trade mark to be able to
fulfil
its essential role in the system of undistorted
competition
which
the Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the
control
of a single undertaking
which
is responsible
for
their quality (see, inter alia, judgments of 29 September 1998,
Canon,
C-39/97,
EU:
C:1998:442,
paragraph 28; of 12 November 2002, Arsenal
Football
Club,
C-206/01,
EU:
C:2002:651,
paragraph 48; and of 6 March 2014, Backaldrin Österreich The Kornspitz
Company,
C-409/12,
EU:
C:2014:130,
paragraph 20).
42 The requirement, when
applying Article 15(1) of Regulation No 207/2009, of use in accordance
with
the essential
function
of indicating origin reflects the
fact
that,
while
a mark may, admittedly, also be used to
fulfil
other
functions,
such as that of guaranteeing the quality of that product or service or that of
communication,
investment or advertising (see, inter alia, to that effect, judgments of 18 June 2009, L’Oréal and Others,
C-487/07,
EU:
C:2009:378,
paragraph 58, and of 22 September 2011, Interflora and Interflora British Unit,
C-323/09,
EU:
C:2011:604,
paragraph 38), it is nevertheless subject to the sanctions provided
for
in that regulation
where
it has not been used in accordance
with
its essential
function
for
an uninterrupted period of
five
years. In that
case,
the rights of the proprietor of the mark are
declared
to be revoked, in accordance
with
the rules laid
down
in Article 51(1)(a) of Regulation No 207/2009, unless he is able to invoke proper reasons
for
failing
to make use of the mark in a
way
that enables it to
fulfil
its essential
function.
class="C01PointnumeroteAltN">
NAME="point43">43 The
Court
will
now examine, in the light of the principles set out above,
whether
the use of an individual mark such as that in the main proceedings as a label of quality may be regarded as being made in accordance
with
the essential
function
of the mark.
44 In that regard, the essential function
of the mark should not be
confused
with
the other
functions,
referred to in paragraph 42 of the present judgment, that the mark may
fulfil,
such as that of guaranteeing quality.
45 Where
the use of an individual mark,
despite
certifying
the
composition
or quality of the goods or services,
does
not guarantee to
consumers
that the goods or services
come
from
a single undertaking under the
control
of
which
they are manufactured or supplied and
which,
consequently,
is responsible
for
the quality of those goods or services, such use is not made in accordance
with
the
function
of indicating origin.
46 It follows,
as the Advocate General observed in points 47 and 56 of his opinion, that there is no use in accordance
with
the essential
function
of the individual mark
where
it is affixed on goods
for
the sole purpose of being a label of quality
for
those goods and not that of guaranteeing, in addition, that the goods
come
from
a single undertaking under the
control
of
which
they are manufactured and
which
is responsible
for
their quality.
47 In the main proceedings, the VBB stated at the hearing before the Court
of Justice that it is an association by State
charter
(kraft staatlicher Verleihung); it invests income
from
licensing its mark in promoting
cotton;
it publishes educational material on
cotton
and organises seminars on that subject; it also acts as an arbitration tribunal and exercises a public
function
by participating in setting the ‘Bremen
CIF
price’,
which
expresses a reference value
for
cotton
on the market.
48 The purpose of the association, as presented by the VBB before the Court
of Justice, suggests that the association is external to its licensees’ production of goods and is not responsible
for
those goods either.
49 However, it is for
the referring
court
to verify, on the basis of all the information submitted to it by the parties in the main proceedings,
whether
relevant and
consistent
evidence makes it possible to
consider
that the affixing of the VBB’s
cotton
flower
mark by the licensees of that association to their goods guarantees to
consumers
that the goods
come
from
a single undertaking, namely the VBB
comprising
its affiliates, under the
control
of
which
the goods are manufactured and
which
is responsible
for
their quality.
50 In any event, the fact
that the licence agreements enable the VBB to verify that the licensees use exclusively good-quality
cotton
fibres
cannot
constitute
such evidence. It implies, at most, that the VBB
certifies
the quality of the raw material used. As is apparent
from
Article 66 of Regulation No 207/2009 and Article 74a, added to that regulation by Regulation No 2015/2424, such a
certification
may,
depending
on the
circumstances,
suffice
for
the view to be taken that a mark other than an individual mark
fulfils
its
function
as an indication of origin. Indeed, Article 66 provides that a
collective
mark
fulfils
its
function
as an indication of origin
where
it
distinguishes
‘the goods or services of the members of the association
which
is the proprietor of the mark
from
those of other undertakings’ and Article 74a states that a
certification
mark
fulfils
that
function
where
it
distinguishes
‘goods or services
which
are
certified
by the proprietor of the mark 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’.
However, the
dispute
in the main proceedings
concerns
an individual mark registered
for
goods. As has been explained in paragraph 41 of the present judgment, such a mark
fulfils
its
function
as an indication of origin
where
its use guarantees to
consumers
that the goods bearing it
come
from
a single undertaking under the
control
of
which
they are manufactured and
which
is responsible
for
the quality of those goods, in their
finished
state and
following
the manufacturing process.
51 In the light of all the foregoing
considerations,
the answer to the
first
question referred is that Article 15(1) of Regulation No 207/2009 must be interpreted as meaning that the affixing of an individual EU trade mark, by the proprietor or
with
his
consent,
on goods as a label of quality is not a use as a trade mark that
falls
under the
concept
of ‘genuine use’
within
the meaning of that provision. However, the affixing of that mark
does
constitute
such genuine use if it guarantees, additionally and simultaneously, to
consumers
that those goods
come
from
a single undertaking under the
control
of
which
the goods are manufactured and
which
is responsible
for
their quality. In that
case,
the proprietor of the mark is entitled to prevent, pursuant to Article 9(1)(b) of that regulation, the affixing by a third party of a similar sign on identical goods, if that affixing
creates
a likelihood of
confusion
on the part of the public.
Question 2
52 By its second question, the referring court
asks,
first,
in essence,
whether
Article 52(1)(a) and Article 7(1)(g) of Regulation No 207/2009 must be interpreted as meaning that an individual mark may be
declared
invalid
where
the proprietor of the mark
fails
to ensure, by
carrying
out periodic quality
controls
at its licensees, that expectations relating to the quality
which
the public associates
with
the mark are being met.
53 In this respect, it should be noted first
of all that Article 52(1)(a) of Regulation No 207/2009 provides that the mark is invalid not only if it is of such a nature as to
deceive
the public
within
the meaning of Article 7(1)(g) of the regulation, but also, generally,
where
the mark has been registered in breach of Article 7 of the regulation.
Consequently,
if there is no risk of
deception
within
the meaning of Article 7(1)(g), the invalidity of the mark must, in principle, nevertheless be
declared
if it is
clear
that the registration of the mark took place in breach of one of the other grounds
for
refusal laid
down
in Article 7.
54 As regards the specific case
of a risk of
deception,
it should be noted that that situation presupposes the existence of actual
deceit
or a sufficiently serious risk that the
consumer
will
be
deceived
(judgments of 4 March 1999,
Consorzio
per la tutela
del
formaggio
Gorgonzola,
C-87/97,
EU:
C:1999:115,
paragraph 41, and of 30 March 2006, Emanuel,
C-259/04,
EU:
C:2006:215,
paragraph 47).
55 Furthermore,
in order to
find
that a mark had been registered in breach of the ground
for
refusal relating to the risk of
deception,
it must be established that the sign
filed
for
the purposes of registration as a trade mark
creates
per se such a risk (see, to that effect, judgment of 4 March 1999,
Consorzio
per la tutela
del
formaggio
Gorgonzola,
C-87/97,
EU:
C:1999:115,
paragraphs 42 and 43).
56 In the present case,
in order to
determine
whether
the
cotton
flower
mark had been registered, on 22 May 2008, in breach of the ground of refusal laid
down
in Article 7(1)(g) of Regulation No 207/2009, it is
for
the referring
court
to examine
whether
the
cotton
flower
sign
filed
by the VBB
was
capable
per se of
deceiving
the
consumer.
The subsequent management, by the VBB, of its mark and licences
for
its use is irrelevant in this respect.
57 Accordingly, the answer to the first
part of the second question referred
for
a preliminary ruling is that Article 52(1)(a) and Article 7(1)(g) of Regulation No 207/2009 must be interpreted as meaning that an individual mark
cannot
be
declared
invalid, on the basis of a joint application of those provisions, because the proprietor of the mark
fails
to ensure, by
carrying
out periodic quality
controls
at its licensees, that expectations relating to the quality
which
the public associates
with
the mark are being met.
58 The second question referred for
a preliminary ruling asks, secondly, in essence,
whether
Regulation No 207/2009 must be interpreted as meaning that its provisions on
collective
EU trade marks may be applied mutatis mutandis to individual EU trade marks.
59 In that regard, it is important to note that the scope of Articles 66 to 74 of Regulation No 207/2009, relating to collective
EU trade marks, is expressly
confined,
according to the
wording
of Article 66(1) of the regulation, to marks
described
as such
when
applied
for.
class="C01PointnumeroteAltN">
NAME="point60">60 The
demarcation
of the applicability of those articles must be strictly adhered to, especially as the rules they introduce, such as those set out in Article 67 of the regulation
concerning
regulations governing use of the mark, go hand in hand
with
the requirement,
when
making the application
for
registration, to expressly
describe
the mark applied
for
as a
collective
mark. Therefore, it is not possible to apply those rules by analogy to individual EU trade marks.
61 Accordingly, the answer to the second part of the second question referred is that Regulation No 207/2009 must be interpreted as meaning that its provisions on collective
EU trade marks may not be applied mutatis mutandis to individual EU trade marks.
class="C01PointnumeroteAltN">
NAME="point62">62 Since these proceedings are,
for
the parties to the main proceedings, a step in the action pending before the national
court,
the
decision
on
costs
is a matter
for
that
court.
Costs
incurred in submitting observations to the
Court,
other than the
costs
of those parties, are not recoverable.
On those grounds, the Court
(Second
Chamber)
hereby rules:
1. Article 15(1) of Council
Regulation (EC) No 207/2009 of 26
February
2009 on the European Union trade mark must be interpreted as meaning that the affixing of an individual EU trade mark, by the proprietor or
with
his
consent,
on goods as a label of quality is not a use as a trade mark that
falls
under the
concept
of ‘genuine use’
within
the meaning of that provision. However, the affixing of that mark
does
constitute
such genuine use if it guarantees, additionally and simultaneously, to
consumers
that those goods
come
from
a single undertaking under the
control
of
which
the goods are manufactured and
which
is responsible
for
their quality. In that
case,
the proprietor of the mark is entitled to prevent, pursuant to Article 9(1)(b) of that regulation, the affixing by a third party of a similar sign on identical goods, if that affixing
creates
a likelihood of
confusion
on the part of the public.
2. Article 52(1)(a) and Article 7(1)(g) of Regulation No 207/2009 must be interpreted as meaning that an individual mark cannot
be
declared
invalid, on the basis of a joint application of those provisions, because the proprietor of the mark
fails
to ensure, by
carrying
out periodic quality
controls
at its licensees, that expectations relating to the quality
which
the public associates
with
the mark are being met.
3. Regulation No 207/2009 must be interpreted as meaning that its provisions on collective
EU trade marks may not be applied mutatis mutandis to individual EU trade marks.
[Signatures]
* Language of the case:
German.
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