If on the one hand the owner of a registered trade mark has the exclusive right to use it in relation to the goods and services covered in the registration, on the other hand it is a legal requirement to actually use the trade mark in trade. Thus non-used trade marks can be subject to revocation. Over time, brands are frequently tweaked or modernised to make them more commercially attractive or up-todate. Taking into account this commercial reality, both the European and French laws provide that use of a registered trade mark in a modified form which does not alter its distinctive character may be considered as use of this trade mark as it was registered earlier.
But what when someone decides to register both the original and the modified forms? Should it be considered that this party in fact intended to protect two distinct trade marks so that use of one could not be claimed as use of the other? The question is important because in that case, the registration of the original trade mark may become vulnerable to a cancellation action.
After adopting successive contradictory solutions over the last few years, the Court of Justice of the European Union (CJEU) recently returned to an approach which is more favourable to trade mark owners by ruling that “the proprietor of a registered trade mark is not precluded from relying, in order to establish use of the trade mark … on the fact that it is used in a form which differs from the form in which it was registered, without the differences between the two forms altering the distinctive character of that trade mark, even though that different form is itself registered as a trade mark” (the Rintisch decision of October 25 2012).
The French Supreme Court, which had previously ruled the opposite, just made an important (and expected) turnaround and is now aligned with the CJEU’s position.
In the case leading to the turnaround, Cofra owns two registrations for the word mark Rodeo for goods in classes 9, 25 and 28, including clothing. In France, the trade mark is used, with Cofra’s authorisation, by C&A in a figurative form. Cofra and C&A established unauthorised use of the mark Rodeo by Dolce & Gabbana and sued this company for trade mark infringement. Dolce & Gabanna sought revocation of Cofra’s registrations on the ground of lack of use in the form as registered.
The Paris Court of Appeal considered that “by filing several trade marks, Cofra sought separate protection and must justify the genuine use for each of these trade marks” and added “that the protection of its figurative mark cannot be extended to its two word marks” and cancelled Cofra’s trade marks.
This decision was overturned by the French Supreme Court. In a direct reference to the Rintisch case, the Court stated that the Court of Appeal should have only examined if the use by Cofra and C&A of the mark Rodeo in a modified form had altered the distinctive character of the trade mark as registered, whether this modified form had been registered or not. The case is therefore referred to a new section of the Court of Appeal for review.
The ruling referring to the Rintisch case is practical and common sense and should be approved: slight variations of a trade mark are sometimes necessary to commercially adapt or rejuvenate a brand. However, the changes in the trade mark cannot be so substantial as to alter its distinctive character to the point that it will be perceived as a new or different trade mark. In such cases, the registration of the original mark might indeed be at risk.