# C_2012399EN.01000701.xml

| 22.12.2012 | EN | Official Journal of the European Union | C 399/7 |
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22.12.2012

EN

Official Journal of the European Union

C 399/7

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Judgment of the Court (Third Chamber) of 25 October 2012 (reference for a preliminary ruling from the Bundesgerichtshof — Germany) — Bernhard Rintisch v Klaus Eder

(Case C-553/11) (1)

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(Trade marks - Directive 89/104/EEC - Article 10(1) and (2)(a) - Genuine use - Use in a form, itself registered as a trade mark, differing in elements which do not alter the distinctive character of the mark - Temporal effects of a judgment)

2012/C 399/10

Language of the case: German

Referring court

Referring court

Bundesgerichtshof

Parties to the main proceedings

Parties to the main proceedings

Appellant: Bernhard Rintisch

Appellant:

Respondent: Klaus Eder

Respondent:

Re:

Re:

Reference for a preliminary ruling — Bundesgerichtshof — Interpretation of Article 10(1) and (2)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) — Concept of ‘use of the trade mark’ — National legislation whereby use of the trade mark in a form different from the form in which it was registered may also be regarded as use of a registered trade mark, provided that the differences do not alter the distinctive character of the mark — Registration of a trade mark in order to secure or expand the protection of another registered trade mark — Legitimate expectations — Whether a change deriving from case-law is applicable to situations that had already arisen at the date of delivery of the judgment in question

Operative part of the judgment

Operative part of the judgment

| 1. | Article 10(2)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks 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 for the purposes of that provision, 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. |
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1.

Article 10(2)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks 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 for the purposes of that provision, 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.

| 2. | Article 10(2)(a) of Directive 89/104 must be interpreted as precluding an interpretation of the national provision intended to transpose it into domestic law whereby Article 10(2)(a) does not apply to a ‘defensive’ trade mark which is registered only in order to secure or expand the protection of another registered trade mark that is registered in the form in which it is used. |
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2.

Article 10(2)(a) of Directive 89/104 must be interpreted as precluding an interpretation of the national provision intended to transpose it into domestic law whereby Article 10(2)(a) does not apply to a ‘defensive’ trade mark which is registered only in order to secure or expand the protection of another registered trade mark that is registered in the form in which it is used.

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(1)  OJ C 80, 17.3.2012.

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