Genuine use of the rectangular red element on Levi jeans

20-06-2013 Print this page
IPPT20130418, CJEU, Colloseum v Levi Strauss

TRADE MARK LAW

 

Genuine use of a registered trademark constituting one of the elements of a composite mark is possible.


"37. [...] The condition of genuine use of a trade mark, within the meaning of Article 15(1) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, may be satisfied where a registered trade mark, which has become distinctive as a result of the use of another composite mark of which it constitutes one of the elements, is used only through that other composite mark, or where it is used only in conjunction with another mark, and the combination of those two marks is, furthermore, itself registered as a trade mark.
 

34. Therefore, the requirements that apply to verification of the genuine use of a mark, within the meaning of Article 15(1) of Regulation No 40/94, are analogous to those concerning the acquisition by a sign of distinctive character through use for the purpose of its registration, within the meaning of Article 7(3) of the regulation.
 

35. Nevertheless, as pointed out by the German Government, the United Kingdom Government and the European Commission, a registered trade mark that is used only as part of a composite mark or in conjunction with another mark must continue to be perceived as indicative of the origin of the product at issue for that use to be covered by the term ‘genuine use’ within the meaning of Article 15(1)."

 

IPPT20130418, CJEU, Colloseum v Levi Strauss

 

C-12/12 - ECLI:EU:C:2013:253