The matter at hand
The VBB, an association exercising various activities linked to cotton, is the owner of an individual EU trade mark representing a cotton flower, registered on 22 May 2008, in particular for textiles (“the cotton flower mark”).
For several decades preceding that registration, the cotton flower sign had been used by manufacturers of textiles made from cotton fibres to certify the composition and the quality of their goods. Since the registration, the VBB has concluded licence agreements in respect of the cotton flower mark with undertakings affiliated to the association. Those undertakings agree to use the mark only for goods made from good-quality cotton fibres. Compliance with this commitment may be checked by the VBB.
Gözze, which is not affiliated to the VBB and has not concluded a licence agreement with it, manufactures textiles made from cotton fibres and has affixed the cotton flower sign to them for several decades.
The VBB brought infringement proceedings against Gözze to get Gözze to cease the use of the cotton flower mark. In the course of those proceedings, Gözze brought a counterclaim for a declaration of invalidity of the cotton flower mark and, in the alternative, for revocation of that mark, claiming that the use of the cotton flower mark as a label of quality does not constitute genuine use by the VBB or its licensees and, in the alternative, is deceptive, alleging that the VBB failed to exercise sufficient quality control.
The Regional Court in Düsseldorf upheld the VBB’s action and dismissed Gözze’s counterclaim, considering that the sign at issue may serve as an indication of origin and that there was a likelihood of confusion. Gözze appealed this decision before the Higher Regional Court in Düsseldorf, which referred the matter to the ECJ for a preliminary ruling.
The judgment of the ECJ
The ECJ recalls that the essential function of individual marks “is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin”. For the trade mark to be able to fulfil its essential role, it must therefore “offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality” (paragraph 42).
This means that no genuine use of an individual mark can be established “where it is affixed on goods for the sole purpose of being a label of quality for those goods and not that of guaranteeing, in addition, that the goods come from a single undertaking under the control of which they are manufactured and which is responsible for their quality” (paragraph 46).
Consequently, the ECJ concludes “that Article 15(1) of [Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark] must be interpreted as meaning that the affixing of an individual EU trade mark, by the proprietor or with his consent, on goods as a label of quality is not a use as a trade mark that falls under the concept of ‘genuine use’ within the meaning of that provision. However, the affixing of that mark does constitute such genuine use if it guarantees, additionally and simultaneously, to consumers that those goods come from a single undertaking under the control of which the goods are manufactured and which is responsible for their quality. In that case, the proprietor of the mark is entitled to prevent, pursuant to Article 9(1)(b) of that regulation, the affixing by a third party of a similar sign on identical goods, if that affixing creates a likelihood of confusion on the part of the public“ (paragraph 51).
As regards the first part of the second question, the ECJ rules, with reference to its decisions in Gorgonzola (C‑87/97) and Emanuel (C‑259/04), that “in order to find that a mark had been registered in breach of the ground for refusal relating to the risk of deception, it must be established that the sign filed for the purposes of registration as a trade mark creates per se such a risk” (paragraph 55). Consequently, “the subsequent management, by the VBB, of its mark and licences for its use is irrelevant” (paragraph 56).
As to the second part of the second question, the ECJ notes that the scope of the provisions relating to collective EU trade marks, is expressly confined, according to the wording of Article 66(1), to marks described as such when applied for. These provisions may therefore not be applied mutatis mutandis to individual EU trade marks.