Background

In 1996, Duales System Deutschland GmbH had applied for registration of the "Grüner Punkt" and the corresponding figurative sign as EU collective trademark with the EUIPO. Subsequently, the company granted licenses in the trademark to third parties to participate in the waste disposal system behind it. After the EUIPO had partially cancelled the trademark in 2015 due to non-use, the trademark owner filed an unsuccessful appeal against this decision. In its judgment of 12 September 2018 (T-253/17), the GC also dismissed the trademark owner's subsequent action. According to the GC, the public will recognise the "Grüner Punkt" trademark on sales packaging only as an indication that the packaging in question can be collected and recycled via a special waste disposal system, but will not consider this as an indication of use of the trademark for the packaged goods themselves (see our previous article).

Before the CJEU, the applicant essentially argued that the GC had misinterpreted the concept of "genuine use" within the meaning of the EU Trade Mark Regulation and had not taken due account of the characteristics of collective trademarks referred to in that regulation.

Decision

The applicant's appeal was successful. The CJEU set aside the judgment of the GC.

According to the CJEU, the GC erred in law by applying the concept of "genuine use" to the EU collective trademark. A collective trademark such as the "Grüner Punkt" which relates to a system for the collection of packaging waste and is affixed to the packaging of goods can certainly also be "genuinely used" for the packaged goods.

The main function of a collective trademark – in contrast to individual trademarks – is not to indicate the identity of origin, but rather to distinguish the members of the association behind the trademark, the proprietor, from non-members. Like individual trademarks, however, collective trademarks are also part of business life. Therefore, "genuine use" must actually be in line with the objective of the companies concerned to create or preserve an outlet.

Accordingly, a collective trademark is used in accordance with its essential function if the use enables the consumer to distinguish the relevant goods or services of members of the association from those of other undertakings. According to the findings of the CJEU, a corresponding use of the "Grüner Punkt" could be assumed.

The CJEU in its decision further explained that the assessment whether the use of the trademark is "genuine" was up to the GC. The GC therefore had to examine whether the use properly established in the present case, i.e. the affixing of the trademark in question to the packaging of the goods, is considered justified in the relevant economic sectors to maintain or gain market share for the goods. In that regard, the CJEU considers that it cannot be ruled out that the indication of membership to the "Grüner Punkt" system on the packaging of everyday consumer goods may have an effect on consumers' purchasing decisions and thus can help to maintain or gain market share.

Conclusion

The judgment of the CJEU in the "Grüner Punkt" case is clear: the strictly differentiated interpretation of the GC concerning the use of trademarks for goods on the one hand and on their packaging as an indication of a specific waste disposal system on the other hand cannot be maintained in this way.

The GC wrongly assumed, generally and for all the goods in question, that – even if the quality of the packaging of the product in question influences the consumer's choice – the trademark in question creates or preserves an outlet vis-à-vis other economic operators only in relation to the packaging and not the product in question itself. That view is, according to the CJEU, contradictory.

In practice, some of the economic sectors concerned relate to everyday consumer goods which are likely to generate packaging waste that the consumer must dispose of. The CJEU therefore held that it cannot be ruled out that the "Grüner Punkt", as an indication that waste is disposed of in an environmentally sound manner, may have an effect on consumers' purchasing decisions and thus may contribute to the maintenance or creation of a share in the market relating to those goods.

Authored by Patrick Fromlowitz and Nikolaus von Bargen