Rintisch v OHMI
- Parties : Rintisch v OHIM
- Theme : Use of a trademark in modified form that is itself registered
- Trademarks : PROTI, PROTIPLUS, Proti power
Mr Eder held the verbal mark Protifit, registered for food supplements, vitamin preparations, and dietetic foods.
Mr Rintisch sought the cancellation of this mark and an injunction against its use based on his PROTI trademarks, and, alternatively, PROTIPLUS and Proti Power, registered, in particular, for protein-based products.
Mr Eder argued that the mark PROTI was not being used. Mr Rintisch replied that he made use of this mark for by using the names PROTIPLUS and Proti Power.
The courts of first instance and appeal dismissed Mr Rintisch's arguments.
Following an appeal, the referring court requested a preliminary ruling from the Court of Justice of the European Union (CJEU) on the question of whether the holder of a registered trademark may, in order to establish the use of the mark, rely on the use of the mark in a different form, which does not alter the distinctive character of the mark, even if the different form is itself registered as a trademark.
According to the CJEU, art. 10 of Directive 89/104 does not require strict conformity between the form used in commerce and that in which the mark was registered. The holder of a trademark may thus make modifications to the mark in the commercial use of the mark in order to better adapt it to the requirements of the marketing and promotion of the products or services in question, provided that the modifications do not modify its distinctive character.
The Court added that an additional condition that the different form in which the mark is used is not itself registered as a trademark cannot be required.