Bernhard Rintisch v Klaus Eder [2012] EUECJ C-553/11 (25 October 2012)

Bernhard Rintisch v Klaus Eder [2012] EUECJ C-553/11 (25 October 2012)

Article 10(2)(a) of Directive 89/104 must be interpreted as meaning 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 altering the distinctive character of that trade mark, even if that different form is itself registered as a trade mark. Article 10(2)(a) also precludes a national interpretation that excludes 'defensive' trade marks from its scope.

Citation
[2012] EUECJ C-553/11
Parties
Claimant: Mr Rintisch; Defendant: Mr Eder
Jurisdiction
European Union
Judgment Date
25 October 2012
Procedural Posture
Preliminary Ruling Reference / Court of Justice of the European Union (third Chamber) Preliminary Ruling
Outcome
Questions answered as set out in the operative part; reference for a preliminary ruling declared admissible; costs to be determined by the national court.
Legal Topics
Trade Marks, Genuine Use, Distinctive Character, Interpretation of Directive 89/104/eec
Intellectual Property Law European Union Law Trade Marks Genuine Use Distinctive Character Interpretation of Directive 89/104/eec

Case Brief

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Parties

Mr Rintisch

Claimant

Mr Eder

Defendant

Procedural Posture

Preliminary Ruling Reference / Court of Justice of the European Union (third Chamber) Preliminary Ruling

Legal Issues

  1. 1 Whether Article 10(2)(a) of Directive 89/104 precludes reliance on use of a trade mark in a form differing in elements not altering its distinctive character, even if that form is itself registered as a trade mark
  2. 2 Whether Article 10(2)(a) precludes a national interpretation excluding 'defensive' trade marks from its scope

Ratio Decidendi

Article 10(2)(a) of Directive 89/104 must be interpreted as meaning 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 altering the distinctive character of that trade mark, even if that different form is itself registered as a trade mark. Article 10(2)(a) also precludes a national interpretation that excludes 'defensive' trade marks from its scope.

Court Disposition

Questions answered as set out in the operative part; reference for a preliminary ruling declared admissible; costs to be determined by the national court.

Orders

  • Article 10(2)(a) of Directive 89/104/EEC interpreted as not precluding reliance on use in a form differing in non-distinctive elements, even if that form is itself registered as a trade mark.
  • Article 10(2)(a) precludes a national interpretation excluding 'defensive' trade marks from its scope.