NEW YORK - For the first time, International Trademark Association INTA filed an amicus brief before the Grand Board of Appeal of the European Union Intellectual Property Office (EUIPO). The case focuses on the application of the rules set out by the Court of Justice of the European Union (CJEU) in the proceedings leading to the decision in C-143/19 P, Der Grüne Punkt v. EUIPO, according to the official website of INTA.

EU trademark law allows for the intervention of interested groups or bodies in EUIPO appeal proceedings referred to the EUIPO Grand Board of Appeal (GBoA). Art. 37(6) of Commission Delegated Regulation (EU) 2018/625 of March 5, 2018, supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union Trade Mark, and repealing Delegated Regulation (EU) 2017/1430 (EUTMDR). On this basis, INTA intervened as amicus curiae.

In Der Grüne Punkt, the CJEU in its judgment of December 12, 2019, decided on genuine use of the EU figurative collective trademark shown below, the so-called Green Dot (Der Grüne Punkt; DGP). The Green Dot is intended to indicate (1) that manufacturers and distributors of the goods covered are affiliated with the environmentally sound disposal system established by DGP; and (2) that this system enables the consumer, when purchasing those goods, to take the packaging waste to a local collection point for its disposal and recovery.

In the first round of proceedings, the General Court of the European Union (GC) confirmed the decisions of the EUIPO bodies, upholding genuine use only for the goods identified as packaging (as listed in various classes) and canceling the mark for all other goods. It argued that the trademark was used on packaging and this did not constitute genuine use for the goods contained therein.

However, on further appeal, the CJEU ruled that it is necessary to assess the mark’s use, that is, its placement on the packaging, and thereby the indication to the consumer. An assessment must be done of whether the indication to the consumer (through the placement of the mark on the packaging) of the availability of a system of local collection and environmentally sound disposal of packaging waste is viewed in the relevant economic sector as warranted to maintain or create a share in the market for the goods.

The CJEU remanded the case back to the EUIPO for such assessment, which in turn referred the case to the Grand Board of Appeal.

INTA’s Key Arguments

Under Article 37(6) EUTMDR, INTA’s amicus brief was filed as third-party observations with the EUIPO GBoA on December 1, 2020, for Case R 1304/2020-G, Der Grüne Punkt Duales System Deutschland GmbH ./. Halston Properties, s.r.o. GmbH.

Genuine Use of Packaging vs. the Packaged Goods

In its brief, INTA argues that the Der Grüne Punkt trademark can be genuinely used (avoiding cancellation for non-use) for the packaged goods because it facilitates consumer choice. On the one hand, consumers could choose goods originating from a company which—being part of the association that owns the trademark—has a certain system in place allowing for disposal of the packaging of the respective goods. On the other hand, they could choose goods originating from companies that—not being part of said association—have other systems in place or that do not provide for any system for disposal of the packaging of the respective goods.

Overlap Between Collective and Certification Marks

INTA further noted that the functions of collective and certification trademarks can overlap in cases where the regulations of use require that the designated goods or services meet certain criteria established by the association which owns the trademark. As a consequence, the trademark certifies certain characteristics of the goods or services. Both categories of trademarks can therefore be genuinely used at the same time.

Evidence

Finally, INTA argues that where the trademark may be intended to be used with respect to a large variety of goods or services (as is often the case with collective and certification marks), the standards for proof of use should be adequately applied. Notably, the extent to which the users of the trademark join a scheme established by the trademark owner through license agreements, with a view of being able to use the mark, should be taken into account.

The brief authors of the amicus submission were Christian Schumacher (Schoenherr, Austria), Marina Perraki (Tsibanoulis & Partners, Greece), Noemi Parrotta (Spheriens, Italy), and Thierry Calame (Lenz & Staehelin, Switzerland), all members of the International Amicus Committee—Europe Amicus Subcommittee.

“This article first appeared on the INTA website and was reprinted with permission from the International Trademark Association (INTA).”