The use of an individual trade mark as a geographical designation of origin is not genuine use
12-11-2019 Print this page
No use corresponding to essential function of a individual trade mark when the trade mark is used in such a way as to guarantee the geographical origin and characteristics of the goods belonging to different manufacturers which are attributable to the origin, but the goods are not manufactured under the control of a single undertaking responsible for quality. No genuine use of the contested trade mark in the present case: the proprietor of the trade mark is not involved in the manufacture of the goods and the responsibility for the quality of the goods rests with different manufacturers who do not form a single undertaking, since they are not economically linked at production level.
This case has only been published in German and French. The Landwirtschaftskammer Steiermark (appellant) is a body governed by public law whose tasks include ensuring the sustainability of agriculture and forestry in Styria. On 15 October 2007, the individual trade mark shown on the left was registered for goods in class 29, pumpkin seed oil. The appellant concluded a licensing agreement with the Verein Gemeinschaft Steirisches Kürbiskernöl, the purpose of which is to protect the interests of its members in relation to the protection of the origin of Steiermark’s pumpkin seed oil. The association is the sole licensee and allows its members to use the trade mark, under the condition that they submit to a check on compliance with the specification for the designation of origin. On 18 October 2013, Schmid filed an application for revocation of the trade mark on the ground that it had not been put to genuine use. On 8 July 2015, the EUIPO's Cancellation Division declared the mark to be invalid with effect from 18 October 2013. The Board of Appeal annulled the decision of the Cancellation Division on the grounds that it had been used genuinely. According to the Board, the essential function of a trade mark is to ensure that all the goods bearing the trade mark have been manufactured under the control of a single undertaking and according to the Board this is the case in the present case. The General Court subsequently annulled the Board's decision, inter alia, because the trade mark, as used on bottles of pumpkin seed oil and in advertising material, does not in itself contain any reference to a particular producer or proprietor of the trade mark and merely indicates the geographical origin and the quality of the goods.
The Court of Justice dismisses the appeal. The General Court was right to hold that there is no use similar to the essential function of an individual trade mark where a trade mark is used in such a way as to guarantee the geographical origin and characteristics of the goods of different manufacturers attributable to the origin, but the goods are not manufactured under the control of a single undertaking responsible for quality. The CJEU considers that the General Court was right to hold that there is no genuine use in the present case. The proprietor of the trade mark is not involved in the manufacture of the goods and responsibility for the quality of the goods rests with several manufacturers who do not form a single undertaking. The manufacturers are not economically linked at the level of production. The CJEU also points out that it is possible to choose to register a collective trade mark.
IPPT20191017, CJEU, Landwirtschafskammer Steiermark v EUIPO
