1 April 2019
The CJEU has upheld the decision to revoke the trade mark CYSTUS for lack of genuine use. CYSTUS had been registered for food supplements.
In response to a revocation attack filed by a competitor, LR Health & Beauty Systems, the proprietor, Georgios Pandalis, filed substantial evidence that CYSTUS had been used on food supplements of which the main ingredient was cistus (a plant extract). The evidence showed CYSTUS used on the packaging of products and not as the main brand or the product name.
The General Court had found that substitution of the letter 'y' for the letter 'I' was insufficient to render this trade mark use: these letters were often used interchangeably as they are generally phonetic equivalents. They cited the well-known principle that misspellings do not make a sign distinctive if the sign's content can immediately be understood as descriptive by the consumer. They also found that use with the ® registered trade mark symbol did not mean the use was trade mark use.
The General Court said the CYSTUS mark had "weak distinctive character". The CJEU dismissed claims that this amounted to an assessment of the validity of the registration in respect of its inherent descriptiveness which the court is not entitled do to in revocation proceedings. It was clear that the General Court had correctly distinguished between the potential for the sign to be used as a trade mark, and the way in which the proprietor had actually used the trade mark:
"...a trade mark is not always used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it has been registered"
This creates an interesting question: a trade mark owner may succeed in registering its descriptive mark by altering letters or adding device elements but if it goes on to use the mark in a way that consumers would perceive as merely describing a characteristic of the product, the registration will become revocable for non-use after five years.
This is not new. In recent years, the CJEU has ruled that use of a sign as a label denoting the quality or standard of a product cannot amount to genuine use (F Gözze Frottierweberei v Verein Bremer Baumwollbörse, Case C-689/15).
If Georgios Pandalis had used CYSTUS as the name of his product, it is possible the revocation would have failed. The case serves as a warning to trade mark owners: even if you obtain registration of a partially descriptive term, be careful how you use it.
Case Ref: 194/17 P
by multiple authors