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EU: “Der Grüne Punkt” is not a trademark used for packaged goods

“Der Grüne Punkt” is a concept that presumably everyone in Germany is familiar with; recently, the financing symbol for participation in the dual collection and recovery systems was the subject matter of proceedings before the General Court (GC). The General Court’s main task was to examine the question of whether proven use of the trademark on packaging is sufficient to prove that the trademark is, at the same time, also used for the packaged goods themselves.

Background

In 1996, Duales System Deutschland GmbH registered “Der Grüne Punkt” and the corresponding figurative sign with the European Union Intellectual Property Office (EUIPO) as a EU collective mark. Subsequently, the company granted licences in the trademark to third parties for participation in a dual disposal system for product packaging. After the Cancellation Division of EUIPO had partially granted an application for revocation of the trademark due to non-use, the proprietor of the trade mark filed an appeal against the revocation, which was initially unsuccessful. Its subsequent action before the General Court was directed against the dismissal of the appeal.

Decision

The action brought by the company was also unsuccessful. According to the General Court, the relevant public merely perceives the trademark “Der Grüne Punkt” used on sales packaging to be an indicator that the packaging in question can be collected and recovered by means of a special waste disposal system, but not an indicator of a use of the trademark for the packaged goods themselves.

With this finding, the GC countered the Plaintiff’s arguments. The Plaintiff had essentially stated that the documents it submitted proved that the trademark in dispute is used commercially both for the packaging of the goods and for the packaged goods themselves, and that this constituted genuine use of the European Union trademark within the meaning of art. 15(1) of Regulation (EC) No 207/2009 (now article 18(1) of Regulation (EU) 2017/1001).

The GC found that, based on the perception of the relevant public, there was no genuine use of the trademark “Der Grüne Punkt” in accordance with its main function, namely to guarantee the origin of the goods in dispute. The GC held that it is true that the trademark in dispute refers to the fact that the manufacturer or distributor of the goods in question is part of the Plaintiff’s licence agreement system and thus points to a certain ecologically minded behaviour on the part of that company. However, according to the GC, the relevant public is certainly capable of distinguishing between a trademark that points to a product’s commercial origin and a trademark that indicates the recovery of packaging waste that has been emptied and used, especially since the products themselves are frequently identified by trademarks belonging to different companies, and that the use of “Der Grüne Punkt” therefore pertained solely to the packaging of goods.

The GC held that this assessment was also confirmed by the regulations governing the use of the contested collective mark, according to which the latter was created to enable consumers and commerce to identify packaging that is part of the collection and recovery system and for which a contribution to funding the system was made, as well as goods having such packaging, and to distinguish it from other packaging and goods.

The GC took the view that, contrary to the Plaintiff’s submission that, in the unlikely event of identical offers by competitors, consumers opt for a packaged product solely due to the quality of the packaging, the contested trademark does not create or preserve a sales market at the expense of other market participants concerning the goods in dispute, but in fact only with respect to the packaging.

Conclusion

Signs and pictograms as used on product packaging are typical examples of use as a trademark for a product. It is not unusual for a product or its packaging to feature multiple trademarks. The question of how consumers perceive this simultaneous use of different signs was the subject matter of the proceedings before the GC. In its decision, the GC assumed that consumers are able to not only categorise generally known signs on packaging, but to specifically recognise their purpose as well. However, such purpose is not always trademark use with respect to the packaged good itself. Ultimately, the judgment fits seamlessly into the General Court’s rulings on similar issues relating to this type of “accompanying trademarks”.

In the proceedings in question, the Plaintiff had also stated that the “Der Grüne Punkt” sign also confers on the packaged products non-material properties which identify companies, and their goods as participating in the “Der Grüne Punkt” system, which would be perceived by the public as particularly environmentally friendly. However, the GC did not concur with these arguments. Given that the Plaintiff’s trademark is a collective mark, not a certification mark, this would seem logical. At Community-law level, the certification mark was introduced on 1 October 2017 as a vehicle that allows the proprietor of the respective mark to guarantee the material, quality, accuracy or other characteristics, as well as the mode of manufacture of goods or performance of services. Since early 2019 this vehicle for protection also exists under German law. When the German Trademark Modernisation Act [Markenrechtsmodernisierungsgesetz – MaMoG] and thus the reform of the German Trademark Act [Markengesetz – MarkenG] entered into force on 14 January 2019, the new trademark category of the national certification mark was introduced (see our earlier Contribution).