Colloseum Holding AG v Levi Strauss & Co.
Date: 2013-04-18
26. In accordance with the settled case-law of the Court, distinctiveness of a mark within the meaning of Article 7 of Regulation No 40/94 means that the mark serves to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (Case C‑311/11 P Smart Technologies v OHIM  [2012] ECR I‑0000, paragraph 23 and the case-law cited). The essential function of the mark is to identify, in the eyes of consumers, the undertaking of origin of the goods (see, to that effect, Case C‑245/02 Anheuser-Busch  [2004] ECR I‑10989, paragraph 59 and the case-law cited).
27. As regards the acquisition of distinctive character by a mark, for the purpose of its registration, through the use which has been made of it within the meaning of Article 7(3) of Regulation No 40/94, the Court has held, in the context of Article 3(3) of the 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), which provision corresponds, in essence, to Article 7(3) of Regulation No 40/94, that acquisition of distinctive character may result both from the use, as part of a registered trade mark, of a component thereof and from the use of a separate mark in conjunction with a registered trade mark. In both cases it is sufficient that, in consequence of such use, the relevant class of persons actually perceive the goods or service, designated exclusively by the mark applied for, as originating from a given undertaking (Case C‑353/03 Nestlé  [2005] ECR I‑6135, paragraph 30).
28. Therefore, regardless of whether the sign is used as part of a registered trade mark or in conjunction with the registered trade mark, the fundamental condition is that, as a consequence of that use, the sign for which registration as a trade mark is sought may serve to identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking.
29. Furthermore, the Court has already held that the finding made in paragraph 30 of the judgment in Nestlé  is of general application and applies also where the issue is establishing whether an earlier mark has a particularly distinctive character in order to ascertain whether there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 (see Case C‑488/06 P L & D v OHIM [2008] ECR I‑5725, paragraphs 50 to 52).
32. Nevertheless, as is apparent from paragraphs 27 to 30 of the judgment in Nestlé , the ‘use’ of a mark, in its literal sense, generally encompasses both its independent use and its use as part of another mark taken as a whole or in conjunction with that other mark.
34. Therefore, the requirements that apply to verification of the genuine use of a mark, within the meaning of Article 15(1) of Regulation No 40/94, are analogous to those concerning the acquisition by a sign of distinctive character through use for the purpose of its registration, within the meaning of Article 7(3) of the regulation.
35. Nevertheless, as pointed out by the German Government, the United Kingdom Government and the European Commission, a registered trade mark that is used only as part of a composite mark or in conjunction with another mark must continue to be perceived as indicative of the origin of the product at issue for that use to be covered by the term ‘genuine use’ within the meaning of Article 15(1).
36. In the light of the above considerations, the answer to the questions referred is that the condition of genuine use of a trade mark, within the meaning of Article 15(1) of Regulation No 40/94, may be satisfied where a registered trade mark, which has become distinctive as a result of the use of another composite mark of which it constitutes one of the elements, is used only through that other composite mark, or where it is used only in conjunction with another mark, and the combination of those two marks is, furthermore, itself registered as a trade mark.
Costs