The article was first published on European Intellectual Property Review
There is genuine use of an EU collective mark where it is used to distinguish the goods or services of the members of the association, proprietor of the mark, from those of other undertakings which are not affiliated with the association, in order to create or preserve an outlet for those goods or services. Nonetheless, the CJEU observed that beyond the essential function of an EU collective mark, there might be other factors that may be able to creating and preserving an outlet for the goods and services in question, such as the intangible value of being an environmentally friendly manufacturer.
On 12 June 1996 Der Grüne Punkt—Duales System Deutschland GmbH (hereinafter “Der Grüne Punkt”) filed a collective EUTM application No.00298273 for the figurative mark
(the DGP mark) which designated a broad range of products, both everyday consumer goods, such as foods, clothing, cosmetics, housekeeping tools, as well as professional apparatus, and services, belonging to classes 1 to 35, 39, 40 and 42 of the Nice Classification.
According to the regulation governing use, the function of the DGP mark is to inform consumers and traders that the packaging, and its contents, are suitable to be disposed of through a particular recycling system and to distinguish it from other products which do not belong to the same system. The application was at first refused as the EUIPO found that the mark does not appear distinctive, since the sign applied for is used in a range of goods in the market and is interpreted as a symbol for recycling. However, it was later registered, in 1999.
On 2 November 2012, the Slovakian company, Halston Properties, filed an application for revocation of the DGP mark pursuant to art. 51(1)(a) of Regulation No.207/2009,1 directed against all of the goods in classes 1 to 34 (the services covered by the contested mark were not disputed) on the ground that the DGP mark had not been used for most of the goods for which it was registered.
The EUIPO partially upheld the cancellation action, revoking the rights conferred by the mark DGP for all the goods in respect of which it had been registered, with the exception of goods consisting of packaging made of different materials in classes 6, 16, 17, 18, 20, 21, 22 and 24.
Der Grüne Punkt filed an appeal, but the EUIPO Fifth Board of Appeal (BOA) rejected it2 because of lack of evidence demonstrating that the mark had been used in accordance with its essential function to guarantee the identity of the commercial origin of the goods and services claimed by the mark.
According to the BOA, the average EU consumer would perceive the DGP as an indicator of the environmentally sound conduct of manufacturers, which invested in recyclable packaging. Therefore, the use of that mark was intended to create or preserve an outlet only for the packaging.
Der Grüne Punkt filed an action before the General Court (GC), arguing that the DGP mark was affixed to packaging which forms with the product contained the same sales unit and that the users of that mark were in fact not packaging suppliers but manufacturers of goods.
Moreover, it remarked that the DGP mark by communicating to consumers the “ecological” behaviour of the manufacturer and the “green” quality of the packaging and the product therein contained, has an intangible value, which is able to influence consumer’s choice and create market share. Thus, use on the packaging should have been considered as genuine use
with regard to the products inside the packaging.
The GC, with decision of 12 December 2018, ruling on Case T-253/17 dismissed Der Grüne Punkt’s arguments. The GC held that consumers are able to distinguish trade marks that indicate the commercial origin of products from those that indicate an ecological quality of packaging. In the case at issue, the public would perceive the use of the DGP mark as an indication of certain quality of the packaging, namely of the possibility of disposing of the packages in an environmentally sound manner, and not of such disposal of the packaged product itself, which may be unsuitable for environmentally sound disposal. As a consequence, also according to the GC, the DGP mark had not been used with the aim to create or preserve an outlet for the packaged goods, but only for their packaging. Moreover, even though the GC recognised that in some cases consumers may decide to prefer a product over another on the basis of the ecological quality of the packaging, it nonetheless held that Der Grüne Punkt had only been able to create an outlet for the packaging alone.
The conclusion of the GC, however, seemed unconvincing.
On the one hand, the GC seemed to have not taken into account the specific and peculiar nature of collective marks. On the other, it was unexplained why the GC had recognised (albeit sceptically3) that the “ecological” quality of the packaging could be a factor capable to influence consumer’s choices, but then the GC had failed to give to such a factor a more significant weight in the assessment of genuine use.
After all, the Court of Justice of the European Union (CJEU) in L’Oreal v Bellure (C-487/07) had already held that a trade mark may fulfil other functions—beyond that of indicating origin—which deserve protection against infringement by third parties, in particular that of guaranteeing the quality of the goods or services and those of communication, investment and advertising4. Also, in Copad v Christian Dior (C-59/08) the CJEU held that the quality of certain goods
“is not just the result of their material characteristics, but also of the allure and prestigious image which bestows on them an aura of luxury” as “the aura of luxury emanating from them is essential in that it enables consumers to distinguish them from similar goods”.5
Therefore, by recognising (even if in the GC’s view it was “unlikely”) that consumers’ choice of one product, among other identical products, may be influenced (if not determined) by the ecological characteristic of its packaging, the GC admitted that the intangible value of being environmentally friendly “enables consumers to distinguish them from similar goods”. As “that” product is ultimately sold (not just the packaging!) the transfer of the “environmental allure” is clearly to the product itself and not only the packaging, the GC conclusion that, affixing that mark to the packaging of a product merely reflects the fact that the manufacturer or distributor of that product conducts itself in compliance with EU legislation, and that the GDP mark does not create or preserve an outlet for that product, but only for its packaging, was open to be challenged.
Der Grüne Punkt thus appealed to the CJEU,6 arguing that the GC would have misinterpreted the concept of “genuine use” without taking into consideration characteristics of EU collective mark. According to Der Grüne Punkt, the GC wrongly regarded as irrelevant the fact that use of the mark at issue indicates to the relevant public that the goods on whose packaging that mark is affixed originate from undertakings which are affiliated with the particular recycling system and that that use reflects an environmentally sound conduct common to those undertakings, which may influence consumer’s choices.
For Der Grüne Punkt, the consequence of having ruled out such factors, which relate to the actual marketing of the goods for which the GDP mark is registered, led the GC to hold that the use of the mark was not intended to cover the goods for which it had been registered, but only the packaging, even though it was undisputed that the users of the GDP mark are not manufacturers or distributors of packaging materials, but actually place goods on the market. Contrary to the assessment made by the GC, as goods and their packaging must be assessed together, since they belong together and are sold as one unit, the use of the collective mark in question was thus fully consistent with the objective of creating or preserving an outlet for the goods of the members of the association which is the proprietor of that mark.7
On the other hand, EUIPO defended the GC decision by arguing that a collective mark must be used “in the capacity of” a collective mark for those goods. This requires an objective and sufficiently specific connection between the collective mark and the goods covered. In the absence of such a connection, it must be concluded that the collective mark is not used in accordance with its essential function, which is to distinguish goods or services of members of the association which is the proprietor of that mark from those of other undertakings.
The CJEU, in its third case dealing with collective trade marks,8 observed that the essential function of an EU collective mark is to distinguish the goods or services of the members of the association, which is the proprietor of the mark, from those of other undertakings.9 Thus, unlike an individual mark, a collective mark does not have the function of indicating to the consumer the identity of origin of goods or services in respect of which it is registered.10 This is because there is no obligation that manufacturers or suppliers that are members of the association form part of the same group of companies which manufacture the goods under a unique control. The users of the collective marks can be also competitors, each of whom uses the collective mark indicating its affiliation with that association, on the one hand, and an individual mark indicating the identity of origin of its goods or services, on the other.
It also follows from the case law of the CJEU, that there is genuine use of a trade mark where the mark is used in accordance with its essential function, in order to create or preserve an outlet for the goods or services for which it is registered (see, inter alia, as regards individual marks, Ansul (C-40/01) EU:C:2003:145 at  and Viridis Pharmaceutical v EUIPO (C-668/17 P) EU:C:2019:557 at ).
By applying mutatis mutandis the existing EU case law to collective marks, the CJEU held that there should be genuine use of an EU collective mark, where it is used to distinguish the goods or services of undertakings which are affiliated with the association—proprietor of the mark—from those of other undertakings which are not affiliated, in order to create or preserve an outlet for those goods or services.
The CJEU noted that the GC at  of the decision under appeal had recognised that, in accordance with its essential function as a collective mark, the DGP mark refers to the fact that the producer or distributor of the goods at issue is part of a particular licensing system aimed at promoting “ecological qualities” offered by Der Grüne Punkt; however, in assessing genuine use the of the DGP, the GC did not properly apply the criteria established by EU case law when it decided that it was not established that the DGP mark was in fact part of those undertakings’ objective of creating or preserving an outlet for their goods.
For the CJEU, before reaching such a conclusion and revoking the GDP mark in respect of almost all of the goods for which it is registered, the GC should have examined, but had not, whether the use—namely the affixing of the GDP mark to the packaging of the goods of the affiliated undertakings is viewed, in the economic sector concerned, as warranted to maintain or create a share in the market for the goods in question.
While the GC recognised that consumers understand what the system relates to collection and recycling of packaging of certain goods and not of the goods themselves, the GC failed to properly examined whether the indication to the consumer, at the time of the offer for sale of the products, that such a system of local collection and of environmentally sound disposal of the packaging waste is made available, appears, in the economic sectors concerned or in some of them, warranted to maintain or create a share in the market for the goods.
Specifically, the CJEU observed that, before excluding that the use of the mark at issue was not intended to create an outlet for the products sold by the member of the association, the GC should have examined whether such use was apt to create a market share for each of the goods and services designated, in light of its special function, which informs consumer that the product sold may be disposed of through a particular recycling system, taking moreover into consideration the nature of those goods and services involved, the characteristics of the market and the scale and frequency of use of the mark.11 In particular, the CJEU found that the GC did not consider the different categories of goods involved and the different characteristics and peculiarities of the related markets, including the different needs of the consumers, while it should have made a more precise assessment, evaluating if the use of the DGP mark was able to attract consumers for each different commercial sector involved.
The CJEU observed that some of the products concerned, such as food, beverages, personal care and housekeeping products, were everyday products that generate daily packaging waste that the consumers must dispose of. Therefore, it could not be denied that the use of a collective trade mark which informs consumers that the packaging of the products is recyclable may influence consumers’ purchase decisions, as they might very well choose one product over another identical because its packaging is easily recyclable.
If thus the consumer’s choice may be so affected, then use of the mark in question would contribute to create market shares also for the products themselves and not just for the packaging, considering that packaging and products are sold together as a unit.
In light of the foregoing, the CJEU set aside the GC judgment, and finding that, in essence EUIPO Fifth Board of Appeal had relied on grounds which, by corresponding to the GC’s judgment, were vitiated by the same error of law insofar as it misinterpreted the scope of the concept of “genuine use” within the meaning of art.15 of Regulation 207/2009, annulled also the Fifth Board of Appeal decision.
In line with its earlier case law, the CJEU applied to EU collective marks the principle that a trade mark function is not limited to identifying the origin of a certain product/service, but there are other factors to be considered, among which are also those intangible values which, depending of the nature of the goods covered and the characteristic of their perspective markets, may have a role in creating or preserving an outlet for the goods in question.12
Some uncertainties, however, remain. This decision applied the earlier provisions of Regulation 209/2007 related to collective EU trade marks, but, as all know, Regulation 2017/1001 introduced the EU certification mark,13 which was not yet available under the earlier law.
Although it might be speculated that also for certification marks the same or similar principles might be applied with regard to what kind of use is necessary to avoid a revocation, this is far for certain, also given the different “function” that certification marks have (and which is more related to consumers’ protection rather than trade mark law). However, we will have to wait at least until 2024 if not later, when the first registered EU
1 Under art.51(1)(a) of the Regulation: “1. The rights of the proprietor of the [EU] trade mark shall be declared to be revoked on application to the Office or on the basis of
a counterclaim in infringement proceedings: (a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the [European Union] in
connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.”
2 Decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 20 February 2017 (Case R1357/2015-5).
3 “Contrary to what the applicant claims, in the unlikely event [emphasis added] that, where the offerings of the competition are identical, consumers will choose a packaged
product on the basis of the quality of its packaging alone, the contested mark does not create or preserve an outlet in relation to other economic operators for the goods at
issue but only for the packaging”: at .
4 The CJEU had already held that “a trade mark may fulfil other functions than that of indicating origin which are equally worthy of protection against infringement by third
parties, such as that of guaranteeing the quality of the goods or services which it designates, or those of communication, investment or advertising”. The CJEU “has
nonetheless always emphasised that the essential function of a mark remains that of indicating origin” (see, to that effect, Google France and Google (C-236/08 to C-238/08)
EU:C:2010:159 at  and ; and Interflora and Interflora British Unit (C-323/09) EU:C:2011:604 at – and the case law cited).
5 Copad SA v Christian Dior (C-59/08) EU:C:2009:260 at –, where the CJEU held that the proprietor of a trade mark can invoke its exclusive rights against a licensee
who contravenes a provision of the licence agreement, if that violation may damage the allure and prestigious image which bestows on those goods an aura of luxury.
6 Der Grune Punkt – Duales System Deutschland GmbH v EUIPO (C-143/19 P) EU:C:2019:1076.
7 Der Grüne Punkt (C-143/19 P) EU:C:2019:1076 at –.
8 The other two cases were The Tea Board v EUIPO (C-673/15 P to C-676/15 P) EU:C:2017:702 an
d W. F. Gözze Frottierweberei and Gözze (C-673/15) 8 June 2017.
9 See The Tea Board v EUIPO (C-673/15) EU:C:2017:702 .
10 See WF Gozze Frottierweberei GmbH v Baumwollborse (C-689/15) EU:C:2017:434 at .
11 The CJEU cited the relevant case law: see, inter alia, Ansul (C-40/01) EU:C:2003:145 at  and , and Viridis Pharmaceutical v EUIPO (C-668/17 P) EU:C:2019:557
at  and .
12 Even though the CJEU has already held that a trade mark may fulfil other functions than that of indicating origin which are equally worthy of protection against infringement
by third parties, such as that of guaranteeing the quality of the goods or services which it designates, or those of communication, investment or advertising, it has nonetheless
always emphasised that the essential function of a mark remains that of indicating origin (see, to that effect, Google France and Google (C-236/08 to C-238/08) EU:C:2010:159
at  and , and Interflora and Interflora British Unit (C-323/09) EU:C:2011:604 at – and the case law cited).
13 cf. art.83(1): “An EU certification mark shall be an EU trade mark which is described as such when the mark is applied for and is capable of distinguishing goods or
services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other
characteristics, with the exception of geographical origin, from goods and services which are not so certified.”
14 The very first registration for an EU certification mark is reg. n.017321738, which was granted on March 9, 2018, but it only designates one class. However, reg.
n.017304999, granted on 4 Decmber 2018 designates goods in classes 2, 3, 5, 8, 16, 18, 20, 21, 24, 25, 28, 29, 30, 31, 32, 33, 34, a situation similar to the DGP.