Opinion of the Advocate General — ECLI:EU:C:2016:916
Date: 2016-12-01
Language of the case: German
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Reference for a preliminary ruling
Origin: Germany

Summary — Judgment of the Court (Second Chamber), 8 June 2017 1. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Concept — Affixing of an individual trade mark on goods as a label of quality — Included — Conditions (Council Regulation No 207/2009, Arts 9(1)(b) and 15(1)) 2. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(c) of Regulation No 207/2009 — Trade marks likely to deceive the public — Concept — Proprietor of the mark failing to ensure, by carrying out periodic quality controls at its licensees, that expectations relating to the quality which the public associates with the mark are being met — Precluded (Council Regulation No 207/2009, Arts 7(1)(g), and 52(1)(a)) 3. EU trade mark — Collective EU trade marks — Inapplicability of the provisions governing collective trade marks to individual trade marks (Council Regulation No 207/2009, Arts 66 to 74) 1. Article 15(1) of Regulation No 207/2009 on the European Union trade mark must be interpreted as meaning that the affixing of an individual EU trade mark, by the proprietor or with his consent, on goods as a label of quality is not a use as a trade mark that falls under the concept of ‘genuine use’ within the meaning of that provision. However, the affixing of that mark does constitute such genuine use if it guarantees, additionally and simultaneously, to consumers that those goods come from a single undertaking under the control of which the goods are manufactured and which is responsible for their quality. In that case, the proprietor of the mark is entitled to prevent, pursuant to Article 9(1)(b) of that regulation, the affixing by a third party of a similar sign on identical goods, if that affixing creates a likelihood of confusion on the part of the public. (see para. 51, operative part 1) 2. Article 52(1)(a) and Article 7(1)(g) of Regulation No 207/2009 on the European Union trade mark must be interpreted as meaning that an individual mark cannot be declared invalid, on the basis of a joint application of those provisions, because the proprietor of the mark fails to ensure, by carrying out periodic quality controls at its licensees, that expectations relating to the quality which the public associates with the mark are being met. (see para. 57, operative part 2) 3. The scope of Articles 66 to 74 of Regulation No 207/2009 on the European Union trade mark, relating to collective EU trade marks, is expressly confined, according to the wording of Article 66(1) of the regulation, to marks described as such when applied for. The demarcation of the applicability of those articles must be strictly adhered to, especially as the rules they introduce, such as those set out in Article 67 of the regulation concerning regulations governing use of the mark, go hand in hand with the requirement, when making the application for registration, to expressly describe the mark applied for as a collective mark. Therefore, it is not possible to apply those rules by analogy to individual EU trade marks. Accordingly, Regulation No 207/2009 must be interpreted as meaning that its provisions on collective EU trade marks may not be applied mutatis mutandis to individual EU trade marks. (see paras 59-61, operative part 3)