Judgment — ECLI:EU:C:2012:671
Date: 2012-10-25
Language of the case: German
Court formation: Third Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: Germany

Summary — Judgment of the Court (Third Chamber), 25 October 2012 1. Questions referred for a preliminary ruling — Jurisdiction of the Court — Limits — Jurisdiction of the national court — Establishing and assessing the facts in the case — Need to make a reference for a preliminary ruling and relevance of the questions raised — Assessment by the national court (Art. 267 TFEU) 2. Questions referred for a preliminary ruling — Jurisdiction of the Court — Limits — Clearly irrelevant questions and hypothetical questions raised in a context not permitting a useful answer — Court’s lack of jurisdiction (Art. 267 TFEU) 3. Approximation of laws — Trade marks — Directive 89/104 — No genuine use of a trade mark — Use of the trade mark in a form differing in elements which do not alter the distinctive character of the mark — Registration of the form used with that form differing from that of the registered trade mark — No effect (Council Directive 89/104, Art. 10(2)(a)) 1. See the text of the decision. (see para. 15) 2. See the text of the decision. (see para. 16) 3. Registration as a trade mark of the form in which another registered trade mark is used, a form which differs from that in which the latter mark is registered, while not altering its distinctive character, is not a bar to the application of Article 10(2)(a) of Directive 89/104 relating to trade marks. First, for a trade mark to possess distinctive character for the purposes of Directive 89/104, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings. Second, there is nothing at all in the wording of Article 10(2)(a) of Directive 89/104 to suggest that the different form in which the trade mark is used cannot itself be registered as a trade mark. Indeed, the only condition laid down in that provision is that the form in which the trade mark is used may differ from the form in which that trade mark was registered only in elements which do not alter the distinctive character of the mark. As to the purpose of Article 10(2)(a) of Directive 89/104, that provision, which avoids imposing a requirement for strict conformity between the form used in trade and the form in which the trade mark was registered, is intended to allow the proprietor of the mark, in the commercial exploitation of the sign, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. That purpose would be jeopardised if, in order to establish use of the registered trade mark, an additional condition had to be met, whereby the different form in which that mark is used should not itself have been registered as a trade mark. In fact, the registration of new forms of a trade mark makes it possible, where necessary, to anticipate changes that may occur in the trade mark’s image and thus to adapt it to the realities of a changing market. Furthermore, it is clear from the twelfth recital in the preamble to Directive 89/104 that the provisions of the directive must be ‘entirely consistent with those of the Paris Convention’ for the Protection of Industrial Property. Therefore, Article 10(2)(a) of Directive 89/104 must be interpreted consistently with Article 5.C(2) of the Convention. Nothing in the latter provision suggests that when a sign is registered as a trade mark the consequence is that use of the sign can no longer be relied on to establish use of another registered trade mark from which the sign only differs in a way that does not alter the distinctive character of the trade mark. (see paras 19-24)