Collective marks in the EU: What constitutes genuine use?

In response to a 2019 CJEU decision on collective marks, INTA has filed an amicus brief before EUIPO’s Grand Board of Appeal to set out its views on genuine use. Doddy Wolfs explains what the ruling and INTA’s submission could mean for owners of collective marks.

An ‘amicus brief’ can be filed by a so-called amicus curiae (Latin for ‘friend of the court’), a term used to denote a person or organisation, who is not a party to a case, but has a strong interest in the matter.

Under article 37(6) of the EU Trademark Directive (EUTMDR), such interested people or organisations can intervene in appeal proceedings that are referred to the Grand Board of Appeal of the European IP Office (EUIPO) by submitting an ‘amicus brief’. Their purpose is to try to influence the court’s decision or touch on important issues. In this instance, the amicus brief relates to collective marks in the EU, including requirements for genuine use.

What is a collective mark?

In the EU, collective marks are trademarks that are owned by an association. Their use is protected by the provisions laid down in article 74 of the EU Trademark Regulation (EUTMR), which defines an EU collective trademark as a sign ‘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’.

In addition to the requirements that are imposed on any valid trademark, a collective mark must also meet other criteria. This means, among other things, proof must be provided that a collective mark meets the requirement of genuine use for the designated goods and services. However, determining when there has been genuine use of collective marks has proved pretty complex.

In a December 2019 case (Der Grüne Punkt v EUIPO), the Court of Justice of the EU (CJEU) elaborated on the requirement of genuine use in relation to collective marks.

Der Grüne Punkt v EUIPO

In 1996, Der Grüne Punkt (DGP) filed an application to register a figurative sign, which was eventually registered in 1999. According to DGP, and pursuant to the regulations that govern use and were attached to the application for registration, the figurative mark was created ‘to enable consumers and traders to recognise packaging which is included in the DGP recycling system and for which a contribution to the financing of the system has been made, as well as goods with such packaging, and to distinguish them from other packaging and goods.’

In 2012, a Slovak company filed an application for partial revocation, stating there was no genuine use of the figurative mark for the designated goods. According to the EUIPO’s Cancellation Division, genuine use was proven only for the goods consisting of packaging and, therefore, partially upheld the application. Thereafter, DGP filed an appeal against this ruling, which was dismissed by the Fifth Board of Appeal. Subsequently, the EU’s General Court dismissed the action brought by DGP against the contested decision.

In its arguments before the CJEU, DGP stated that the General Court had wrongly based its assessment of genuine use on its determination the mark at hand was intended for the packaging of the goods and not for the goods itself for which it had been registered. According to DGP, it was undisputed that the users of the mark at issue place goods on the market and are not distributors or manufacturers of packaging materials. The EUIPO, however, was of the opinion it is necessary the mark is used in the capacity of a collective mark for the goods in question for it to have been put to genuine use. Furthermore, the EUIPO said the connection between the collective marks and the goods for which it has been registered must be objective and sufficiently specific.  

In its ruling, the CJEU shed light on the aspect of genuine use in relation to collective marks in several considerations. First of all, it noted the principle of law in regards to genuine use of an EU trademark also applies to a collective trademark.This means it has to create and preserve an outlet for the goods and services for which the collective mark has been registered and be used in line with its essential function, which is to distinguish the goods and services affiliated to the association which owns the collective mark from those of other parties. Furthermore, according to the CJEU, the General Court should have assessed the genuine use by evaluating "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 conclusion, the CJEU established that, in the territory of the EU, there is genuine use of a collective mark, when it is shown on the packaging of a product of parties that are affiliated with the concerning collective mark, even when that product itself does not bear the mark, but instead refers to the specific mark of a product.

Why INTA filed an amicus brief

In response to the CJEU’s ruling, INTA filed an amicus brief in December 2020 to lay out its views on genuine use in regards to collective marks. It has done so, because it believes the case is significant to developments concerning trademark law.

In its brief, INTA has given its insight on three issues that have emerged as a result of the case and that, in its opinion, need further clarification. First of all, it argues that DGP’s collective mark facilitates consumer choice and can therefore be genuinely used for the packaged goods. Because of DGP’s collective mark, consumers can choose between goods that are produced by a company that is affiliated to the association of the collective mark and for which a system is provided for disposal of the packaging of the goods, and goods for which such a system is not provided.

Secondly, according to INTA, the functions of collective and certification trademarks can overlap when the regulations of use require that the designated goods or services meet specific criteria as set up by the association which owns the trademark. Consequently, the trademark then certifies certain specifics of the goods or services. This means collective and certification trademarks can be genuinely used at the same time.

Lastly, INTA notes that the standards for proof of use should be sufficiently applied to trademarks that may be intended to be used in regards to a large variety of goods or services, which is often the case for the categories of collective and certification trademarks.

What happens next?

In its ruling, the CJEU has made clear there is genuine use of an EU collective mark when:

• it is used to distinguish the designated goods or services of the parties that are affiliated with the association of the collective mark from the goods or services of undertakings that are not part of the association,
• with the aim to create and preserve an outlet for the designated goods and services.

When assessing the genuine use of a collective mark, the CJEU also noted that the perception of consumers must be taken into account. With this decision, the CJEU has given a clear advantage to owners of collective marks in the EU.

In addition, INTA’s submission provides useful additions to the aspect of genuine use regarding collective marks; in particular, its comments concerning the overlap of genuine use of collective and certification trademarks gives food for thought and is an interesting observation, one the CJEU did not make in the case discussed. Further clarification of this matter by the CJEU or other EU organisations is therefore expected. We will continue to monitor developments and update you in due course.

In the meantime, if you have any questions about collective or certification trademarks, please get in touch with your Novagraaf attorney or contact us below.

Doddy Wolfs works at Novagraaf’s Competence Centre in the Netherlands.