Levi Strauss & Co. v Casucci SpA.
Date: 2006-04-27
15. The Court has thus pointed out that, in order to ensure the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish that product or service from others which have another origin, the proprietor must be protected against competitors wishing to take unfair advantage of the status and reputation of the trade mark by selling products illegally bearing that mark (see Case C-349/95 Loendersloot  [1997] ECR I‑6227, paragraph 22, and Case C‑206/01 Arsenal Football Club [2002] ECR I-10273, paragraph 50). That must also be the case where, on the basis of a similarity between the signs and the mark in question, there is a likelihood of confusion between them.
16. Member States must take measures which are sufficiently effective to achieve the aim of the directive and they must ensure that the rights conferred by it can be effectively relied upon before the national courts by the persons concerned (see Case 14/83 von Colson and Kamann  [1984] ECR 1891, paragraph 18, and Case 222/84 Johnston  [1986] ECR 1651, paragraph 17).
19. Article 12(2)(a) of Directive 89/104 provides that a trade mark is liable to revocation if, after the date on which it was registered, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service in respect of which it is registered. Thus, by balancing the interests of the proprietor against those of his competitors in the availability of signs, the legislator considered, in adopting this provision, that the loss of that mark’s distinctive character can be relied on against the proprietor thereof only where that loss is due to his action or inaction. Therefore, as long as this is not the case, and particularly when the loss of the distinctive character is linked to the activity of a third party using a sign which infringes the mark, the proprietor must continue to enjoy protection.
28. Thus, Article 9(1) of the directive provides that where, in a Member State, the proprietor of an earlier trade mark has acquiesced, for a period of five successive years, in the use of a later trade mark registered in that Member State while being aware of such use, he is in principle no longer entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used. By the same token, Article 10 provides that if, following completion of the registration procedure, the proprietor has not put the trade mark to genuine use in the Member State concerned in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, that trade mark is to be subject to the sanctions provided for in the directive, unless there are proper reasons for non-use. Finally, under Article 12(1) and (2) of Directive 89/104, a trade mark is to be liable to revocation if it has not been put to genuine use within a continuous period of five years or if it has become, in consequence of its proprietor’s conduct, the common name for a product or service.
29. Those provisions indicate that the purpose of Directive 89/104 is generally to strike a balance between the interest of the proprietor of a trade mark to safeguard its essential function, on the one hand, and the interests of other economic operators in having signs capable of denoting their products and services (see, in relation to the requirement of availability of colours in the case of registration as a trade mark of a colour per se, Case C-104/01 Libertel  [2003] ECR I‑3793).
30. It follows that the protection of rights that the proprietor of a trade mark derives under the directive in question is not unconditional, since in order to maintain the balance between those interests that protection is limited in particular to those cases in which the proprietor shows himself to be sufficiently vigilant by opposing the use of signs by other operators likely to infringe his mark.
33. Accordingly, where a trade mark has lost its distinctive character in consequence of acts or inactivity of the proprietor so that it has become a common name within the meaning of Article 12(2) of Directive 89/104, its proprietor can no longer assert the rights conferred on him under Article 5 of that directive.
34. Such inactivity may also take the form of a failure on the part of the proprietor of a mark to have recourse to Article 5 in due time, for the purposes of applying to the competent authority to prevent third parties from using the sign in respect of which there is a likelihood of confusion with that mark, since the purpose of such applications is precisely to preserve the distinctive character of the mark in question.
35. Having regard to the considerations set out in paragraphs 29 and 30 of this judgment, it is for the competent national court to establish revocation, if appropriate, linked in particular to such a failure, including in the context of proceedings seeking protection of the exclusive rights conferred by Article 5 of Directive 89/104, and which may have been brought late by the proprietor of the mark. If taking account of revocation for the purposes of Article 12(2) in infringement proceedings were solely a matter for the national laws of the Member States, the consequence for trade mark proprietors might be that protection would vary depending on the applicable law. The objective of ‘the same protection under the legal systems of all the Member States’ set out in the ninth recital in the preamble to the directive, where it is described as fundamental, would not be attained (see, on the subject of the onus of proving infringement of the proprietor’s exclusive rights, Case C-405/03 Class International  [2005] ECR I-0000, paragraphs 73 and 74).