Genuine use of trademarks

Published on: 18 September 2012

German questions on the scope of the Bainbridge decision have been referred to the CJEU for a preliminary ruling

by Anna FALTER, Head of Trademarks Dennemeyer & Associates, Munich

In the well-known Bainbridge decision, dating from 2007 (C-234/06), the Court of Justice for the EU (CJEU) decided in obiter dictum that it is not admissible to extend the protection afforded to a registered mark by virtue of the proof of use thereof, to a different mark which has been registered but not used, on the grounds that the latter mark is merely a slightly altered form of the former mark. The question to be clarified in this instance was whether it is possible to use a word/figurative mark 'Bridge' by proving the prior use of the word mark 'The Bridge'.

According to German provisions, proof of the genuine use of a mark by the use of a sign differing in elements, that do not alter the distinctive character of the mark, is also permitted when the mark is also registered in the used form. This provision has led to a discussion in the German literature about the compatibility of the German provision with EU law.

The CJEU now has the opportunity to define the scope of its rulings on the Bainbridge decision in its answer to two questions from the German Court of Justice in the pending  "Proti Case" and "The clothing tabs II case".

In the underlying decisions, the German Court of Justice states that it deems the Bainbridge decision of the CJEU to be applicable only in cases of inadmissible defensive marks. The CJEU's response to the two questions, referred for a preliminary ruling, is therefore eagerly awaited, as this is the CJEU's first opportunity to expound on the scope of its 2007 decision. It is hoped that the CJEU will provide clarification to the effect that its decision is to be restricted to inadmissible defensive trademarks.