Author: Jeremy Phillips (Editor, Journal of Intellectual Property Law & Practice)
Case C-445/12 P Rivella International AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Baskaya Di Baskaya Alim E C Sas, Court of Justice of the European Union (First Chamber), 12 December 2013
Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu032, first published online: April 2, 2014
The use of a trade mark in Switzerland may, by its very nature, be deemed to constitute use of that mark in Germany, under the terms of a bilateral treaty between Germany and Switzerland on the reciprocal recognition of use of intellectual property rights, but the effect of that treaty does not extend to such deemed use being use of an earlier mark in Germany under the opposition provisions of the autonomous system for the Community trade mark.
Under Article 42(3) of the Regulation 207/2009 on the Community trade mark, an applicant for registration of a Community trade mark is entitled to request an opponent to furnish proof of use of an earlier national trade mark upon which the opposition is founded. Such use must be within the territory of the Member State to which that earlier mark belongs. Article 5 of the 1892 Convention between Switzerland and Germany on the reciprocal protection of patents, designs and trade marks provides that use of a trade mark in Switzerland is the equivalent to the use of that mark in Germany.
Baskaya applied to register as a Community trade mark a figurative sign, depicted below, in which the word ‘baskaya’ was portrayed beneath a line of five stars on a red oval background.
The goods in respect of which registration was sought were ‘meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats’ (Class 29), ‘coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice’ (Class 30) and ‘beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’ (Class 32).
Rivella opposed the application, invoking a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation 40/94 (now Art 8(1)(b) of Regulation 207/2009). The opposition was based on the earlier international figurative mark, depicted above, with effect in Germany, Spain, France, Italy, Austria and the Benelux countries, for ‘beer, ale and porter; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages’ (Class 32).
Baskaya sought, as it was entitled to do, proof of use of the earlier trade mark by Rivella. At this point, events took an unusual turn since, in March 2009, Rivella said that it was maintaining the opposition only in respect of the German part of its international registration; the company submitted a number of documents as proof of use of its mark in Switzerland. It relied, in that regard, on Article 5 of the 1892 Convention between Switzerland and Germany on the reciprocal protection of patents, designs and trade marks. According to Rivella, under that convention, use of its mark in Switzerland was equivalent to its use in Germany. The Opposition Division rejected the opposition for lack of proof of use of the earlier trade mark within Germany since that the documents provided by Rivella showed that the mark cited in opposition was used only in Switzerland and rejected the application of the 1892 Convention.
Rivella then appealed unsuccessfully to the Fourth Board of Appeal. In the view of the Board of Appeal, the only relevant legal framework within which the use of Rivella's mark was to be considered was that of Regulation 207/2009 on the Community trade mark and, more specifically, Articles 42(2) and (3) of that Regulation, under which the earlier trade mark must have been put to genuine use in the Member State in which it was protected.
Rivella then brought an action before the General Court for annulment of the Board of Appeal's decision. The sole basis of this action was that since, under Article 5(1) of the 1892 Convention, a trade mark was deemed to be used in Germany if it was used in Switzerland, Rivella was not further obliged to furnish proof of genuine use of its earlier trade mark in Germany.
The General Court considered that questions relating to the proof furnished in support of the grounds for opposition to an application for registration of a Community trade mark and questions relating to the territorial aspect of the use of marks were governed exclusively by the relevant provisions of Regulation 207/2009, irrespective of the domestic law of the Member States. The national or international nature of an earlier trade mark cited in Community opposition proceedings in no way meant that the national law applicable to that earlier trade mark was applicable in those proceedings. Although procedures for the registration of trade marks were covered by the national law of each Member State, the same could not be said of the determination of the territory in which genuine use of the earlier trade mark must be established, as that question was governed by EU law. Accordingly the General Court dismissed Rivella's action for annulment.
Rivella then appealed further to the Court of Justice of the European Union (CJEU), in essence raising a subtler version of its earlier ground of appeal. The CJEU dismissed the appeal.
The appeal turned principally on two propositions. Rivella first argued that the General Court erred in law by applying the genuine use requirement under Article 42(3) to its earlier trade mark, even though that trade mark was an international trade mark rather than a national trade mark and was therefore not covered by those provisions. The CJEU disagreed. Article 42(3) did not, however, distinguish national trade marks from those granted under the international registration system since the term ‘earlier national trade marks’ mentioned in Article 42(3) had to be understood as referring trade marks which had effect in a Member State, regardless of their provenance via national or international grant mechanisms. If this were not so, observed the CJEU, Rivella's argument would circumvent the trade mark protection system of which Articles 42(2) and 42(3) formed part, depriving them of their useful effect.
Rivella next argued that the question of the ‘territorial validity’ of a nationally registered trade mark was exclusively governed by national law, especially in the case of national trade marks which have been registered under international arrangements and which had effect in a Member State. However, Rivella was in effect seeking to plead its German trade mark in the same manner as a national defensive trade mark, but the CJEU in Case C-234/06 P Il Ponte Finanziaria v OHIM  ECR I-7333 had already ruled that a defensive trade mark, under which an earlier trade mark was protected on the basis of national law even if its use could not be established, could not be used to oppose the registration of a Community trade mark.
The line of argument taken by Rivella is one with which many readers will be familiar: a ground of appeal which is too attractive to ignore, yet too flimsy to stand a chance of succeeding.
In legal terms, this opposition is a story of unmitigated defeat for Rivella. In the world of business and commerce, it is something of a triumph in that Baskaya's Community trade mark application has been kept off the register for over six years. Baskaya would have been in a far better position if the Opposition Division had accepted that the use in Switzerland was indeed use in Germany and then dismissed the opposition on the ground that the respective marks were insufficiently similar to one another for there to be any likelihood of confusion, an outcome which in this author's opinion is by far the more probable one.