The legal situation
In order to remain valid and enforceable, registered trademarks must be genuinely used on the market by their owner or with his consent. Genuine use can also be found if the trademark is used in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, Art. 26 (3) 1st sentence of the German Trademark Act (MarkenG), Art. 15 (1) (a) Community Trademark Regulation (CTMR). According to Art. 26 (3) 2nd sentence MarkenG, this rule also applies if slightly differing sign actually used is also registered as a trademark. Following an obiter dictum in the European Court of Justice’s “BAINBRIDGE” judgment of September 13, 2007 (C-234/06 P), uncertainty had arisen concerning the compliance of this specific German trademark rule with the European Trademark Directive. With a decision of 17 August 2011 (I ZR 84/09 – PROTI), the German Federal Supreme Court (BGH) therefore asked the European Court of Justice on the compliance of Art. 26 (3) 2nd sentence MarkenG with the corresponding rules of the European Trademark Directive (see the “News” report of 27 October 2011 on www.mitscherlich.de).
Judgment of the European Court of Justice (ECJ)
In a judgment of 25 October 2012 (C-553/11), the ECJ now confirmed that – provided the conditions of Art. 26 (3) 1st sentence MarkenG (= Art. 15 (1) (a) CTMR) are met, i.e. where no alteration of the distinctive character can be found – use of a sign slightly differing from the form of the registered trademark can constitute genuine use of this trademark even if the sign actually used is also registered as a (second) trademark. With other words, the ECJ confirmed the compliance of Art. 26 (3) 2nd sentence MarkenG with European law.
Evaluation of the ECJ’s findings
The ECJ’s findings bring about legal certainty in particular for trademark owners who are interested in a safe modernization of their already established trademarks. If the modernized form of the sign does not alter the trademark’s distinctive character, the requirement of genuine use is fulfilled regardless of a possible trademark registration also for the modernized sign.