Genuine use in a different form of a trademark without altering the disctinctive character

TRADE MARK LAW

Genuine use trademark by use in a different form without altering the distinctive character, even if different form is registered as (defensive) trademark

"30. In view of the foregoing considerations, the answer to the first question and to point (a) of the third question is that Article 10(2)(a) of Directive 89/104 must be interpreted as meaning that the proprietor of a registered trade mark is not precluded from relying, in order to establish use of the trade mark for the purposes of that provision, on the fact that it is used in a form which differs from the form in which it was registered, without the differences between the two forms altering the distinctive character of that trade mark, even though that different form is itself registered as a trade mark.

33. Accordingly, the answer to the second question is that Article 10(2)(a) of Directive 89/104 must be interpreted as precluding an interpretation of the national provision intended to transpose it into domestic law whereby Article 10(2)(a) does not apply to a ‘defensive’ trade mark which is registered only in order to secure or expand the protection of another registered trade mark that is registered in the form in which it is used."

IPPT20121025, CJEU, Rintisch v Eder

C-553/11 - ECLI:EU:C:2012:671