Quality Labels as Trade Marks
- 02/12/2016
- Articles
On 1 December 2016, Advocate General Melchior Wathelet (the “AG”) issued an opinion in answer to two questions referred to the Court of Justice of the European Union (“ECJ”) for a preliminary ruling in case C-689/15 GmbH, Wolfgang Gözze v. Verein Bremer Baumwollbörse. The case deals with the possibility to use quality labels as individual trade marks within the meaning of Regulation 207/2009 of 26 February 2009 on the Community trade mark (the “Trade Mark Regulation”).
The dispute arose between W. F. Gözze Frottierweberei (“Gözze”) and its manager on the one hand, and the association Verein Bremer Baumwollbörse (“Verein”) on the other hand. Verein owns a visual trade mark, a cotton flower, which it licences to companies active in the textile sector as a sign of high quality of cotton fibres. Gözze is active in the same sector and uses the cotton flower on its hangtags but did not obtain a licence. Verein consequently initiated infringement proceedings against Gözze. The matter was referred to the Higher Regional Court of Düsseldorf which requested the ECJ to determine whether (i) the use of a trade mark as a quality label can constitute use as a trade mark under the Trade Mark Regulation; and (ii) it is possible to revoke a trade mark used as a quality label if the right holder does not ensure expectations of high quality by failing to carry out regular quality controls.
As regards the first question, the AG established that quality labels are not covered by the Trade Mark Regulation. As a consequence, quality labels will only benefit from the protection offered by the Trade Mark Regulation if the label is also used as an indication of origin, which is the essential function of a trade mark.
The AG answered the second question in the negative. Since quality labels can only be protected as individual trade marks under the Trade Mark Regulation, they must only conform to the essential function of the trade mark, which is the indication of origin. According to the AG, nothing in the Trade Mark Regulation provides for any kind of quality control to satisfy quality expectations.