Composite Marks - Colloseum v Levi Strauss

Levi Strauss owns a number of marks for the device of a back pocket with a red tag and for the trade mark LEVI'S.

Levi Strauss took action in Germany against Colloseum because Colloseum was producing trousers with a small rectangular red fabric tag on the seam of the back pocket. Colloseum in its defence alleged that Levi Strauss had not used the trade mark consisting of the back pocket with the blank red tag. The question was therefore whether or not the second mark (figure 2) had been genuinely used.

It was found that Levi Strauss had used the first trade mark (figure 1), the one with the word LEVI'S within it. The first mark (figure 1) encompasses the second mark (figure 2) and the Federal Court of Justice in Germany put the following questions to the Court of Justice of the European Union (CJ), to establish whether use of the first mark could be considered sufficient to preserve the rights of the second mark:

1. "Is Article 15(1) of Regulation no. 40/94 to be interpreted as meaning that: a trade mark which is part of a composite mark and has become distinctive only as a result of the use of the composite mark can be used in such a way as to preserve the rights attached to it if a composite mark alone is used?"
2. "A trade mark is being used in such a way as to preserve the rights attached to it if it is used only together with another mark, the public sees independent signs in the two marks and, in addition, both marks are registered together as a trade mark?"

Decision

Reference was made in the court's decision to the Nestlé HAVE A BREAK case (C-353/03) which had confirmed that distinctive character could result "both from the use, as part of a registered trade mark, of a component thereof and from the use of a separate trade mark in conjunction with a registered trade mark". The fundamental condition is that the public will connect the goods or services with a particular undertaking. The answer to the question referred was that "the condition of genuine use of a trade mark may be satisfied where a registered trade mark, which has become distinctive as a result of the use of another composite mark of which it constitutes one of the elements, is used only through that other composite mark, or where it is used only in conjunction with another mark, and the combination of those two marks is, furthermore, itself registered as a trade mark". An important factor is that the trade mark is distinctive and communicates the origin of the goods to the public, so this decision could not be relied upon if the mark at issue was unused or formed an insignificant element of the composite mark such that the public would not be able to identify origin from that mark.

Comment

This decision has helpfully clarified the position and it seems likely that it will be relied upon regularly in the future.