The matter at hand
This matter concerns the question of whether the scope of protection of a trade mark which has been registered for a period of less than five years is affected by the fact that the proprietor has not put the mark to genuine use for all goods and services covered by that registration.
This question arose in proceedings initiated by a Swedish bank, Länsförsäkringar, alleging infringement of its EU device mark by a construction company, Matek, which used a highly similar device for its main activity of building wooden houses. Although the registration of Länsförsäkringar’s device mark did cover ‘building construction’ and was still within the grace period of five years during which it is not necessary to demonstrate genuine use, the Svea hovrätt (Svea Court of Appeal, Sweden) held that the examination of the likelihood of confusion had to be carried out not on the basis of the formal registration of that mark, but of the activity actually carried out by the proprietor. The court thus concluded, on a global assessment, that there was no likelihood of confusion.
Länsförsäkringar brought an appeal before the Högsta domstolen (the Swedish Supreme Court), arguing that during the five year grace period, the assessment of the likelihood of confusion must be based solely on the formal registration of the mark in question and not on the actual use thereof. The Supreme Court subsequently referred the case to the ECJ for preliminary ruling.
The judgment of the ECJ
The ECJ first of all holds that it is apparent from the wording and purpose of Articles 15(1) and 51(1)(a) and (2) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark that, until the period of five years following registration of the EU trade mark has expired, the lack of genuine use of the mark for all or some of the goods or services for which the mark is registered cannot lead to the complete or partial revocation thereof. According to the ECJ, those provisions “thus confer on the proprietor a grace period for beginning genuine use of his mark, during which he may rely on the exclusive rights which the mark confers, pursuant to Article 9(1) of the regulation, in respect of all those goods and services, without having to demonstrate such use” (paragraph 26).
On this basis, the ECJ concludes that the similarity of the goods or services and, therefore, the likelihood of confusion within the meaning of Article 9(1)(b) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, should be assessed, during the period of five years following registration of the EU trade mark, by having regard to the goods and services covered by the mark’s registration, and not in relation to the use that the proprietor has actually made of the mark during that period (paragraph 27).
On those grounds, the ECJ rules that “Article 9(1)(b) of [Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark], read in conjunction with Articles 15(1) and 51(1)(a) of that regulation, must be interpreted as meaning that, during the period of five years following registration of an EU trade mark, its proprietor may, if there is a likelihood of confusion, prevent third parties from using in the course of trade a sign identical or similar to his mark in respect of all goods and services identical or similar to those for which that mark has been registered without having to demonstrate genuine use of that mark in respect of those goods or services.”