The use of a trademark within a family of trademarks cannot be invoked as a basis for justifying the use of another trademark belonging to the same family.
The company Otech, registrant of the French trademarks “Micro Rain” and “Big Rain”, having been made aware of the use of the signs “Micro Rain” and “Big Rain”, has served a formal notice to the companies Ocmis and Irtec to cease the use of these signs. The latter companies have then brought an action against the company Otech for the forfeiture of its rights on its two French trademarks and all relating products, in accordance with Article L714-5 of the French Code of Intellectual Property (Code de la Propriété Intellectuelle) which provides that “The owner of a trademark who, without good reason, has not made genuine use of his trademark in connection with the products and services covered by the registration for an uninterrupted period of five years may see his trademark cancelled”.
The Court of Appeal of Pau (Cour d’Appel de Pau), in a decision of January 2014 (CA Pau, 31 January 2014, No. 14/439), declared the forfeiture of the rights of the company Otech on its French trademark “Micro Rain” for all the products for which it was registered.
The company Otech, considering that the genuine use of a trademark of the French territory can be established by the use of its varied form, itself registered as a trademark, as long as its initial distinctive character is not altered, filed an appeal with the French Supreme Court (Cour de Cassation). Indeed, the company Otech argued that the use of its trademark “Mini Rain”, which only differed from the contested trademark “Micro Rain” by elements which did not alter its distinctive character, stood as evidence of the use of the said trademark “Micro Rain”.
Confirmation of appeal decision declaring cancellation
The French Supreme Court (Cour de Cassation) was then faced with the question of whether the use of a trademark, in the particular context of a trademark family, justified the use of another trademark belonging to the same family.
The French Supreme Court (Cour de Cassation), in its decision of 19 January 2016, applying the principles set out by the Rintisch decision of the Court of Justice of the European Union, confirmed the judgement of the Court of Appeal of Pau (Cour d’Appel de Pau) regarding the decision to cancel the rights of the company Otech.
Application of the European case law “Rintisch”
Indeed, the Court of Justice of the European Union, interpreting Article 10, paragraph 2, subsection a), of the Council directive 89/104/CEE of 21 December 1988 while reconciling the national laws of the Member States regarding trademarks, has emphasised that in the particular context of a family or series of trademarks, the use of a trademark cannot be invoked as a basis for justifying the use of another trademark (C-553/11, Rintisch, 25 October 2012, ground 29). It should be noted that this solution has not always prevailed and that the case law has often fluctuated on this matter.
In the judgement in question, the company Otech argued that the trademark « Micro Rain » belonged to a family of sixteen trademarks, all of them constructed around the term « Rain » used as a suffix or prefix. However, it could not, in order to avoid the cancellation of its rights over the trademark « Micro Rain », invoke the use of the trademark « Mini Rain », even if these trademark marques would belong to the same family or series. On this strict legal ground, the dismissal of the appeal is legally justified.
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Composite mark: is use through another composite mark sufficient?
European Union: appreciation of evidence of use in revocation proceedings of a mark