Case C-654/15, Länsförsäkringar – no genuine use of a Community trade mark [judgment 2016, ECLI:EU:C:2016:998]

What is the effect on the registration of a trade mark if there is no genuine use within a five year period following its registration?

Background
Länsförsäkringar is a company in the banking, insurance and financial services sector of the Swedish economy. However, it also protects itself with intellectual property rights and in that context it became the right holder of a Community trade mark in January 2008, which covers classes 36 (real estate) and 37 (construction).

Länsförsäkringar has asked the Swedish courts for an injunction against Mateks, a company that makes and constructs buildings from wood. Länsförsäkringar claims that the sign Mateks uses is confusingly similar to that used by Länsförsäkringar, contrary to Article 9(1)(b) of the Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (codified version)(OJ [2009] L78/1).

The pertinent provisions of the Regulation are: Section 2, which governs the ‘Effects of Community trade marks’; and Article 9, which deals with the ‘Rights conferred by a Community trade mark’.

Article 9(1)(b) states:

1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
…
(b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;

For Länsförsäkringar’s claim to be successful, it would had to satisfy the four cumulative requirements embedded in Article 9(1)(b).

At first instance, Länsförsäkringar was successful. However, on appeal, the judgment was overturned as there was no likelihood of confusion.

At the Swedish Supreme Court
The Swedish Supreme Court appreciated that the likelihood of confusion must be examined with an overall assessment that takes into account all of the relevant factors about the goods and services at stake.

The CJEU’s case law establishes that where there is a high degree of similarity between the marks, there can be a likelihood of confusion notwithstanding the fact that there is a low degree of similarity between the goods and services at stake. In that context, the Swedish Supreme Court recalled the CJEU’s judgments in SABER, Case C-251/95, ECLI:C:1997:528; Canon, Case C-39/97 ECLI:C:1998:442; and Lloyd Schuhfabrik Meyer, Case C-342/97, ECLI:C:1999:323.

However, it was not clear to the Swedish judges how the similarity between goods and services ought to be assessed in the context of the ‘actual use’ limitiation in Recital 10 of the Regulation.

A further issue about ‘actual use’ perplexed the Swedish judges. Article 15 of the Regulation requires the right holder to make genuine use of the trade mark within a period of five years following the registration. It was not clear what the legal effects of that rule should be when it was connected to the rules in Article 42(2) and Article 51(1)(a) of the Regulation. This particular case concerned a three-year period of time between 2008-2011.

Questions Referred
According to the website of the UK’s Intellectual Property Office, the Swedish Högsta domstolen has asked:

1. Does it affect the proprietor’s exclusive right that, within a period of five years following registration, he has not made genuine use of the Community trade mark in the European Union for goods or services covered by the registration?

2. If the answer to question 1 is in the affirmative, in what circumstances and in what way does that situation affect the exclusive right?