The new Regulation (EU) 2015/2424 amending Council Regulation 207/2009/EC on the Community Trade Mark will enter into force from 23 March 2016
To the list of activities which a trademark owner will not in future be able to prevent a further exclusion has been added. The descriptive use defense (on the kind, quality, quantity, intended purpose, value, and geographical origin, time of production or other characteristics of the goods) has been extended to apply also to use of signs which are not distinctive. Thus, third parties will now have as a defence available against alleged infringement to claim that they use the sign in a descriptive way, provided that the use is made in good faith. Such use should always remain free for third parties.
The provision seems a bit odd. If a sign is not distinctive, it will not be used ‘as a trade mark’ when used and then there is no infringement pursuant to Article 10. Therefore, you will not come to the question of a limitation of the proprietor’s rights pursuant to the new Article 12 1 (b).
It must be presumed that a trademark is distinctive as long as it is registered. However, if a third party invokes the new Article 12 (1) (b) and successfully claims that the identical mark is used in a descriptive way, this would logically mean that the registered trademark is not distinctive and should be declared invalid. Or, if it is a combined word and device trademark, the proprietor will not have any protection for the descriptive word element as such.
Niclas Dahlberg, Attorney at Law