“‘Genuine use’ within the meaning of article 15(1) and article 51(1)(a) of Council Regulation (EC) No 207/2009 could be fulfilled where a Community figurative mark was used only in conjunction with a Community word mark which was superimposed over it, and the combination of those two marks was, furthermore, itself registered as a Community trade mark, to the extent that the differences between the form in which that trade mark was used and that in which it was registered did not change the distinctive character of that trade mark as registered. Where a Community trade mark was not registered in colour, but the proprietor had used it extensively in a particular colour or combination of colours with the result that it had become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party used in order to represent a sign alleged to infringe that trade mark were relevant in the global assessment of the likelihood of confusion or unfair advantage pursuant to article 9(1)(b) and (c) of Regulation No 207/2009. The fact that the third party making use of a sign which allegedly infringed the registered trade mark was itself associated, in the mind of a significant portion of the public, with the colour or particular combination of colours which it used for the representation of that sign was relevant to the global assessment of the likelihood of confusion and unfair advantage for the purposes of article 9(1)(b) and (c) of Regulation No 207/2009.”
WLR Daily, 18th July 2013
Source: www.iclr.co.uk
