The European Court of Justice, at the request of the German Federal Court of Patents, has recently ruled on the proof concerning the distinctive character acquired through the use of a trademark consisting of a shade of red, applied for to distinguish financial products.
In the case at issue, the Court clarified that in the context of invalidity proceedings with respect of a mark which is devoid of distinctive character, in accordance with the German trademark law, the trademark holder is obliged to prove that the distinctiveness acquired through use already existed at the time of the application, not being sufficient, for the “salvation” of the trademark, that distinctiveness has been acquired at a later date, though before registration.
The Court arrived to such a conclusion by analyzing the content of art. 3 paragraph 3 of Directive 2008/98 / ec which states: “3. A trade mark shall not be refused registration or, if registered, shall not be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration or following the use which has been made thereof, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration. “.
Pursuant to this regulation, the Court explained that the Community legislator has reserved to each Member State the power laid down in the second sentence of Article 3(3) i.e. to introduce into its own regulations the possibility that in the context of invalidity proceedings with respect to a mark which is devoid of intrinsic distinctive character, the distinctive character acquired through use could be assessed with regard not only to the time of filing of the application but also subsequently to the filing of the application for registration or after the date of registration.
According to the Court, the Federal Republic of Germany seems not to have made use of this option, with the result that the owner of the trademark affected by a request for invalidity for lack of distinctive character will have no other option that to prove that the disputed mark had already acquired distinctiveness through use at the moment of the filing.
Instead, the Italian Industrial Property Code in force has different rules on this particular matter. Under Article. 13 paragraph 3 CPI, in fact, the trademark cannot be declared or deemed void if, on a date before the proposition of the claim of invalidity, the trademark has acquired distinctive character through use “.
Under the Italian law, therefore, in the context of invalidity proceedings with respect to a mark which is devoid of distinctive character, the holder of the contested trademark may assert the distinctive character acquired through use on a subsequent date to that of the trademark application provided that this has occurred at a time prior to the proposition of the claim of invalidity.