Case T‑72/17

Gabriele Schmid

v

European Intellectual Property Office

(EU trade mark — Revocation proceedings — International registration designating the European Union — Figurative mark Steirisches Kürbiskernöl — Protected geographical indication — Article 15, Article 51(1)(a) and Article 55(1) of Regulation (EC) No 207/2009 (now Article 18, Article 58(1)(a) and Article 62(1) of Regulation (EU) 2017/1001) — Genuine use of the mark — Use as a trade mark)

Summary — Judgment of the General Court (Ninth Chamber), 7 June 2018

1.      EU trade mark — Appeals procedure — Action before the EU judicature — Power of the General Court to alter the contested decision — Limits

(Council Regulation No 207/2009, Art. 65(3))

2.      EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Definition — Criteria for assessment

(Council Regulation No 207/2009, Art. 15(1))

3.      EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Definition — Use of a protected geographical indication registered as an individual mark

(Council Regulation No 207/2009, Art. 15(1))

4.      EU trade mark — Surrender, revocation and invalidity — Causes of revocation — Absence of genuine use of a trade mark — Figurative mark Steirisches Kürbiskernöl

(Council Regulation No 207/2009, Arts 15(1) and 51(1)(a))

1.      See the text of the decision.

(see paras 25, 62)

2.      As regards Article 15(1) of Regulation No 207/2009, it is settled case-law that there is ‘genuine use’, within the meaning of that provision, of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark.

However, the fact that a mark is used in order to create or preserve an outlet for the goods or services for which it is registered and not for the sole purpose of preserving the rights conferred by the mark is not sufficient reason to conclude that there is a ‘genuine use’ within the meaning of Article 15(1) of Regulation No 207/2009. It is equally indispensable that the mark be used in accordance with its essential function.

As regards individual marks, the essential function is to guarantee the identity of origin of the goods or services designated by the mark to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality.

The requirement, when applying Article 15(1) of Regulation No 207/2009, of use in accordance with the essential function of indicating origin reflects the fact that, while a mark may, admittedly, also be used to fulfil other functions, such as that of guaranteeing the quality of that product or service or that of communication, investment or advertising, it is nevertheless subject to the sanctions provided for in that regulation where it has not been used in accordance with its essential function for an uninterrupted period of five years. In that case, the rights of the proprietor of the mark are declared to be revoked, in accordance with the rules laid down in Article 51(1)(a) of Regulation No 207/2009, unless he is able to invoke proper reasons for failing to make use of the mark in a way that enables it to fulfil its essential function.

(see paras 42-45)

3.      It follows from the case-law that, where the use of an individual mark, despite certifying the geographical origin of the mark and the qualities attributable to that origin of the goods of different producers, does not guarantee to consumers that those goods or services come from a single undertaking under the control of which they are manufactured or supplied and which, consequently, is responsible for the quality of those goods or services, such use is not made in accordance with the function of indicating origin.

In fact, there is no use in accordance with the essential function of the individual mark where it is affixed on goods for the sole purpose of identifying the geographical origin of the goods in question and the qualities attributable to that origin and not for that of guaranteeing, in addition, that the goods come from a single undertaking under the control of which they are manufactured and which is responsible for their quality.

(see paras 48, 49)

4.      See the text of the decision.

(see paras 50-53, 55-59)