Composite mark: is use through another composite mark sufficient?

Symbole copyrightEuropean Court of Justice, Decision of 18 April 2013, No. C-12/12, Coloseum Holding AG v. Levi Strauss & Co. (1)

In a case regarding the trademark protecting the well-known “red tab” Levi’s jeans, the European Court of Justice was asked to define whether the use of a registered trademark only through another composite mark (name + design, as one element of the composite mark), could be defined as genuine use.

The problem arose because Levi’s had not used the “red tab” trademark as such, but in combination with the word “Levi’s” written on it. This is a fundamental issue that the Court had to deal with since owners of figurative, color, or 3-D trademarks typically use them in combination with the brand name. Nevertheless, they also need the benefit of an independent protection for the device element.

The ECJ confirms that the requirement of genuine use can be fulfilled if the registered trademark is used in combination with another trademark. The only prior requirement is that the registered trademark has acquired a distinctive character of its own, separate and independent from the combination with another mark.

This judgment follows a line of previous judgments concerning combination trademarks and in particular the Nestlé judgment dated July 7th 2005 (C-353/03) where the Court stated that the “acquisition of distinctive character may result both from the use, as part of a registered trade mark, of a component thereof and from the use of a separate mark in conjunction with a registered trade mark. In both cases it is sufficient that, in consequence of such use, the relevant class of persons actually perceive the goods or service, designated exclusively by the mark applied for, as originating from a given undertaking”.