Bernhard Rintisch v Klaus Eder.
Date: 2012-10-25
15. In that regard, it should be recalled that, in accordance with settled case-law, in proceedings under Article 267 TFEU, which are based on a clear separation of functions between the national courts and the Court of Justice, the national court alone has jurisdiction to find and assess the facts in the case before it and to interpret and apply national law. Similarly, it is solely for the national court, before which the dispute has been brought and which must assume responsibility for the judicial decision to be made, to determine, in the light of the particular circumstances of the case, both the need for and the relevance of the questions that it submits to the Court. Consequently, where the questions submitted concern the interpretation of European Union law, the Court is in principle bound to give a ruling (Case C-145/03 Keller [2005] ECR I-2529, paragraph 33; Case C-119/05 Lucchini [2007] ECR I-6199, paragraph 43; and Case C-11/07 Eckelkamp and Others [2008] ECR I-6845, paragraphs 27 and 32).
16. Thus, the Court may refuse to rule on a question referred for a preliminary ruling by a national court only where it is quite obvious that the interpretation of European Union law that is sought bears no relation to the actual facts of the main action or its purpose, where the problem is hypothetical, or where the Court does not have before it the factual or legal material necessary to give a useful answer to the questions submitted to it (Case C-618/10 Banco Español de Crédito  [2012] ECR, paragraph 77 and case-law cited).
19. In that regard, it must, first, be borne in mind that 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 (see, by analogy, Joined Cases C-468/01 P to C-472/01 P Procter & Gamble v OHIM [2004] ECR I-5141, paragraph 32; Case C-64/02 P OHIM  v Erpo Möbelwerk  [2004] ECR I-10031, paragraph 42; Case C-304/06 P Eurohypo v OHIM [2008] ECR I-3297, paragraph 66, and Case C-311/11 P Smart Technologies  v OHIM [2012] ECR, paragraph 23).
20. It should then be stated that 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.
21. 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.
22. 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.
25. That interpretation is not at variance with the interpretation resulting from the judgment in Il Ponte Finanziaria  v OHIM , in particular paragraph 86 thereof, to which the order for reference alludes.
27. Having held, in paragraph 63 of the judgment in Il Ponte Finanziaria v OHIM , that where there is a ‘family’ or ‘series’ of trade marks, the likelihood of confusion results more specifically from the possibility that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for, considering, erroneously, that that trade mark is part of that family or series of marks, the Court concluded that, in order to establish that there is a ‘family’ or ‘series’ of trade marks, use of a sufficient number of trade marks capable of constituting that ‘family’ or ‘series’ must be shown.
28. The Court went on to hold, in paragraph 64 of Il Ponte Finanziaria  v OHIM , that no consumer can be expected, in the absence of use of a sufficient number of trade marks capable of constituting a ‘family’ or a ‘series’, to detect a common element in such a family or series and/or to associate with that family or series another trade mark containing the same common element. Accordingly, in order for there to be a likelihood that the public may be mistaken as to whether the trade mark applied for belongs to a ‘family’ or ‘series’, the earlier trade marks which are part of that ‘family’ or ‘series’ must be present on the market.
29. It is in that particular context of a claim that there is a ‘family’ or ‘series’ of trade marks that the Court’s statement in paragraph 86 of Il Ponte Finanziaria  v OHIM should be understood, according to which it is not possible, under Article 15(2)(a) of Regulation No 40/94, and consequently under Article 10(2)(a) of Directive 89/104, to extend, by means of proof of use, the protection enjoyed by a registered trade mark to another registered mark, the use of which has not been established, on the ground that the latter is merely a slight variation on the former. The use of one trade mark cannot be relied on in order to prove the use of another trade mark where the aim is to establish use of a sufficient number of trade marks of a single family.
30. In view of the foregoing considerations, the answer to the first question and to point (a) of the third question is that Article 10(2)(a) of Directive 89/104 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.
Second question