Could the trade mark for the coloured product shape of the well-known Gardena syringes be at risk of revocation because within a continuous period of five years it had not been put to genuine use? And is this still the case, even if the lack of genuine use for an uninterrupted period of five years can only be ascertained in the course of the proceedings of a lawsuit?
This question was crucial to a lawsuit brought by the Swedish company Husqvarna AB against the discounter Lidl in Germany in February 2015. Husqvarna is the parent company of Gardena Germany and holds the trade mark rights to the above Union trade mark. The Union trade mark is registered in colour for the product shape of the well-known Gardena water hose syringes:
Lidl had sold water hose syringes in its online shop that were very similar to the Gardena ones. Of course, Husqvarna wanted to have these banned:
As is usually the case in such proceedings, Lidl filed a motion in its defence for revocation of the EU trade mark for the coloured product shape of the Gardena syringes. This was on the basis that Gardena had changed the colours of its syringes and, it was argued, the trade mark was therefore no longer put to genuine use.
However, the trademark was still protected when the revocation action was filed in September 2015. The Gardena water hose syringes had been sold in the typical orange-grey/light grey colour until the end of May 2012, and these colours were registered in the trade mark. In addition, the shape of the syringes corresponded to the trade mark. This use constituted genuine use of the trade mark and for this reason, its protection would only expire five years after the last genuine use of the trade mark, such expiration in this case being on 31 May 2017.
However, at the time of the last oral hearing of facts before the Court of Appeal on 24 October 2017, the situation had changed. This was because Gardena had only marketed its sprayers in the colours orange-dark grey/black from May 2012 onwards, and no longer in the colours orange-grey/light grey:
This no longer corresponded to the registered trade mark. The protection of the product shape mark was mainly based on the colours orange-grey/light grey and did not extend to the colours orange-dark grey/black. The product shape itself did not justify the trade mark protection. It complied with all practical specifications for water hose syringes. Therefore, as of 31 May 2017 – five years after the colours were changed – the trade mark was no longer protected in terms of the product shape of Gardena syringes.
Since European Union law does not contain a precise regulation of the relevant time periods for the assessment of revocation, the Federal Court of Justice in Germany wanted to apply German procedural law. For this purpose, the relevant point in time is the date of the last oral factual hearing before the Court of Appeal. At that time, in September 2017, the trade mark was no longer being genuinely used within the specified continuous period of five years and should have been able to be revoked.
However, the Federal Court of Justice referred the question of when the revocation of a trade mark should take effect to the European Court of Justice. The Court has now ruled that German procedural law is not relevant to the question of when a trade mark is liable to revocation. Only the law of the European Union applies. And for all Member States, it is only the date at which the application for revocation is filed that is decisive for assessing whether the proprietor’s rights in a trade mark should be revoked on the ground that it has not been used for a continuous period of five years.
The action for cancellation of the trade mark, due to revocation brought by Lidl in its defence, will therefore fail.
Court of Justice of the European Union, 17 December 2020, C-607/19.
Learnings: If you have succeeded in having the shape of your products protected as a colour-registered trademark, be careful not to change the registered colours of the products. The colours are usually the basis for the protection of the shape mark. If you change the colours of the products to a relevant extent, you will only have trade mark protection until the expiry of five years after the change. In a revocation action filed during this time, the later non-use is no longer taken into account. However, you must expect that the revocation claimant will now file a new action for cancellation, due to revocation.