The CJEU states that the packaging of goods may influence consumer’s purchasing decision

Tuesday, 21 of January of 2020

On 12 December 2019 the Court of Justice of the European Union (CJEU) issued an interesting Judgment in Case C-143/19 related to a revocation proceedings against a collective trademark.

The CJEU, after recalling the case-law concerning both, the function of collective trademarks and genuine use, declared that a collective trade mark is subject to effective use in accordance with its essential function, which is to distinguish the goods or services of members of the association which is the proprietor of the mark from those of other undertakings, in order to create or preserve an outlet for those goods or services.

In this case, it is stated that affixing to the packaging of goods a collective trademark may influence consumers’ purchasing decision and contribute to the maintenance of a share in the market relating to those goods.

The CJEU ruled that General Court (GC) failed to carry out the examination referred to in the case-law, it erred in law its application of the concept of “genuine use” of a collective trademark and, consequently, the CJEU has revoked the GC Judgment in case T-253/17 that dismissed the appeal filed against the resolution of the EUIPO Board of Appeal related to the revocation proceedings against a figurative trademark owned by the German firm Der Grüne Punkt (DPG).

Initially, the Board of Appeal of the EUIPO considered that DGP had not provided evidences that the trademark at issue (representation of a circle with two arrows) was used in accordance with its essential function, namely, to guarantee the identity of the origin of the goods for which it was registered.

In this regard, the GC stated that a genuine use of the trademark in the packaging did not constitute proof of genuine use of the goods, and that the relevant public identified the mark at issue as indicating that the packaging may be collected and recovered in accordance with a certain system, but not indicated the origin of the goods.

Although the GT considered that the packaging and the good appeared as constituting a unit at the point of sale, stated that DGP had not provided proof that the mark at issue was used in accordance with its essential function, and the average consumer did not perceive the mark at issue as an indication of the origin of those goods, but associates that mark with environmentally conduct of the undertakings taking part in DGP’s recycling system.

The mentioned Judgment ruled that the GC did not examine whether the proved use (affixing that mark to the packaging of the goods marketed by the undertakings affiliated with the DGP system) was viewed as warranted in the economic sector concerned in order to create or preserve a share in the market.

Some of the economic sectors concerned cover everyday consumer goods, such as food, beverages, personal care goods, that generate packaging waste on a daily basis, it cannot be ruled that the indication on the packaging of the goods that manufacturer/ distributor is affiliated with a collection system and of environmentally sound disposal of packaging waste may influence consumer’s purchasing decision.

This judgment recognizes, on one hand, the essential function of the collective trademark to distinguish the goods or services of the members of the association and, secondly, that the consumer may associate a trademark with an environmentally sound conduct of certain manufacturers and distributors.

This CJEU’s interpretation is also in line with the current environmental culture and enhance of sustainability since, unquestionably the association by consumers to an ecological conduct may influence their purchasing decisions, so the collective trademark may contribute to the maintenance or creation of a share in the market relating to some goods.