The EU General Court has held that use of a registered trade mark (“RTM”) as a magazine title could amount to “use” of the RTM if the services for which it is registered are provided through the magazine. Could this drive a coach and four through the “don’t use if for 5 years and lose it” RTM rule, asks Nadine Seymour.
Topic: Trade marks
Who: Strategi Group Ltd v OHIM, Case T-92/09
Where: The European Union General Court (previously the Court of First Instance)
When: October 2010
Law stated as at: 29 October 2010
What happened:
The EU General Court upheld the Office for Harmonisation in the Internal Market (“OHIM”) Board of Appeal decision that a title of a magazine that is sold rather than given away free may amount to genuine use of a registered trade mark where the services designated by that mark were provided through the magazine (in this case "business consultancy" and "organisation of exhibitions" in classes 35 and 41).
Key Facts:
In 2004 Strategi Group ("Strategi") filed an application for a Community trade mark at OHIM for the word sign STRATEGI in Class 35 for personnel recruitment services (the "Application"). Reed Business Information ("RBI") opposed the Application based on RBI’s prior French word mark STRATEGIES. This was registered in classes 9, 16, 28, 35, 41 and 42 but the relevant classes for these purposes were 35 and 41, within which were the following designated services which were argued to be similar to personnel recruitment services: "assistance to industrial or commercial undertakings in the running of their business", "business consultancy, information or enquiries" and "organisation of exhibitions." RBI provided evidence of prior use in relation to these services including extracts from 23 issues of the "Strategies" magazine dating from 1998 to 2006.
The Opposition Division rejected the evidence provided, finding that it did not prove genuine use of the earlier mark. On appeal by RBI, the Second Board of Appeal disagreed with the Opposition Division and remitted the case back to it to decide whether on the facts that there had been genuine use.
In the Board of Appeal's view, there was nothing to prevent a magazine title from also being protected as a trade mark for services offered through that publication, if its contents indeed showed genuine use of the sign for the services concerned. The position might be different if the magazine were distributed free of charge, but if as in this case, the magazine was sold, then the payment of the price of the magazine could constitute remuneration for the services provided, which was a key element of genuine use.
Strategi was predictably not happy with this and appealed to the EU General Court. However the General Court agreed with the Board of Appeal and dismissed the appeal.
Why this matters:
'Genuine use' of a trade mark
The principle of 'genuine use' that the Court of Justice for the European Union ("CJEU" formerly known as the European Court of Justice) has developed requires consideration of all relevant facts to establish whether commercial exploitation of the mark is real or merely "token", taking into account market share, the characteristics of the market in question, and the scale and frequency of the use of the mark use. If that use can be deemed commercial use within that business in relation to the classes in question, the requirements will be met (Ansul BV v Ajax Brandbeveiliging BV, Case C-40/01, 11 March 2003, paragraph 43).
Subsequent judgments by the CJEU where it considered "genuine use" following Ansul include:
- Case T-126/03 Reckitt Benckiser (Espana) v OHIM – Aladin (ALADIN) [2005] ECR II-2861 – a relevant factor in considering genuine use is the breadth of the earlier registration;
- Case T-418/03 La Mer Technology v OHIM – Laboraoires Goëmar (LA MER), September 2007, not published, the ECJ stated that commercial use need not be to the consumer but may arise where licensed to an agent in preparation for commercial exploitation;
- Case C-17/06 Celine Sarl v Celine SA [2007] ECR I-7041, where the ECJ held that a company name could not be genuine use unless there was a direct use in relation to the goods or services of the classes registered; and
- Case C-495/07 Silberquelle v Maselli [2009] ECR I-137, where promotional items were considered capable of amounting to genuine use of a mark, but only where they were within the class registered and their use could go to the essential function of the trade mark.
Is this the last word on this issue?
The decision was at the EU General Court and could still be appealed to the CJEU on a point of law. Also, even if there is no appeal, the matter still has to go back to the Oppositions Division for them to decide whether on the facts there has been genuine use of RBI's brand such as to enable them to oppose successfully Strategi's application.
As things stand, however, it might seem a remarkably liberal interpretation of "genuine use" of a brand STRATEGI to regard sales of STRATEGI magazine as potentially genuine use of STRATEGI in relation to not just magazines but also any service, such as "running a business" on which an article in that magazine is offering advice.
This approach also potentially creates more headaches for NewCo looking to find out if its chosen new brand name for a service-based business is free for use. Based on this decision, Newco's pre-launch searches will have to extend to all printed publications which might conceivably contain articles on topics overlapping with the services Newco plans to offer under the proposed brand.
Is this what the General Court intended or will we see more twists and turns in this case before it is done? Time will tell.
