Trade marks will not only be associated with the company they origin from, but might also be associated with certain quality or ethical standards. Certain associations are using their trade marks only to license it to producers who fulfill a certain standard. While some jurisdictions recognize such use of a trade mark as sufficient to maintain trademark protection, the European Union Trade Mark Regulation (EUTMR) does only mentioning the term “genuine use” of a trade mark. On 8 June 2017, the Court of Justice of the European Union (CJEU) has decided whether using a trade mark only to indicate certain quality or ethical standards can be seen as “genuine use”.
The Verein Bremer Baumwolle (VBB), an association under German law, owns an individual European Union trade mark (EUTM) displaying a cotton flower. The VBB concludes license agreements under this trade mark with associated producers of textiles who oblige themselves to comply with certain quality standards concerning the cotton they use. The defendant, a German manufacturer of textiles, displayed this trade mark on its products without having an appropriate license to do so.
VBB sued the defendant for trade mark infringement. The defendant brought a counterclaim for declaration of invalidity of this trade mark. In first instance the Düsseldorf District Court found infringement , but the Düsseldorf Court of Appeals referred the case to the CJEU with the following questions: Is the use of a trade mark as a label for quality a “genuine use” in regards to an individual trade mark? Must such a trade mark be declared invalid, if the holder of said trade mark does not ensure the quality standard by carrying out periodic quality controls?
According to the CJEU, the essential function of a trade mark is to guarantee that all goods or services marked by the sign come from the same undertaking or economically linked undertakings. It might be a secondary purpose of a trade mark to ensure a certain quality, but the “genuine use” of a trade mark is only to guarantee that the goods origin from the same or an economically linked entity. Therefore, the proprietor is not using the trade mark in terms of the EUTMR, if it is only licensing the trade mark to ensure a certain quality. This is particularly relevant, because, if there is no “genuine use” of a trade mark for five years, the trade mark proprietor might face an application for revocation of its trade mark.
In relation to the second question, the CJEU stated that an individual trade mark is not to be declared invalid, if the proprietor does not conduct quality controls on a regular basis. While this is a reason for invalidation of collective trade marks, it cannot be applied to individual trade marks because these trade marks are not designed to guarantee a certain quality standard. Individual trademarks might be declared invalid, however, if the public is made to believe that there will be quality controls while the trade mark proprietor never intended to conduct them.
The judgment is apparently guided by the fact that the EUTMR provides two specific instruments to mark products that come from certain undertakings. There is the possibility to file a collective trade mark to display that the user of the trade mark is a member of a certain association that follows certain standards. Further, as of 1 October 2017, a certification trade mark could be used to show that certain standards are met. The CJEU apparently tries to ensure that individual trade marks cannot be used to circumvent the requirements for collective and certification trade marks.