In Germany, the deposit mark is emblazoned on all non-refillable bottles and beverage cans. Why this trademark is nevertheless not used in a way that preserves rights and how it could have been done better is clarified by the European General Court (EGC).
Deutsche Pfandgesellschaft is the owner of an EU figurative trademark. The trademark has been registered since June 2007 as an individual trademark for, among other things, various services, including
- Waste management administrative activity
- technical waste consulting and public relations
- Removal and storage of waste and recycling materials
- Taking back empty disposable packaging and disposable packaging containers
- Collecting, recording, transporting and intermediate storage of beverage containers
- Operation of a deposit system (marking, collecting, recording, transporting and temporary storage of beverage containers)
- Garbage and waste recycling; sorting beverage containers.
- Development and implementation in technical terms of take-back systems for packaging of the most diverse material groups, of the most diverse sizes and origins as well as the most diverse recycling options and from the most diverse points of accumulation
On the basis of this trademark, DPG Deutsche Pfandsystem GmbH filed an opposition against a quite similar trademark.
EUIPO denies use of trademark for deposit
During the opposition proceedings, the applicant of the younger sign raised the objection of non-use, since the DPG trademark is older than 5 years. DPG then submitted photos of a beverage can, a plastic bottle, a label used on automatic recycling and sorting equipment for packaging, excerpts from its website ” and a document with the conditions for participation in the DPG system.
However, this was not sufficient evidence of genuine use for the Opposition Division of EUIPO, which therefore rejected the opposition in its entirety. The Board of Appeal of EUIPO subsequently endorsed that view, finding that DPG’s deposit mark would not be perceived by the relevant public as indicating that the goods or services in question came from a particular undertaking under whose control they were manufactured or provided. On the contrary, the sign is perceived as a descriptive indication informing that the goods belong to a specific category of goods, namely goods with disposable packaging subject to a deposit. Moreover, DPG submits that the sign is used by professional consumers participating in the system and familiarizing themselves with DPG’s administrative and legal documents as an official identification and not as a trademark indicating the commercial origin of the services covered by that sign. Finally, DPG and its services would be identified by its name in the documents and on its website, while the use of the trademark would only serve decorative purposes.
EGC: No use as an individual mark
The EGC (Judgment of 06.09.2023 – Ref. T-774/21) agrees with the opinion of the EUIPO and denies a right-preserving use. Genuine use is to be assessed according to its main function, and in the case of an individual mark this is the function of origin.
If an individual mark is perceived as a sign intended to certify the composition or quality of the goods or services, but does not guarantee that the goods or services identified with it come from a single undertaking under whose control they are manufactured or provided and which is consequently responsible for the quality of those goods or services, there is no use of that sign as an indication of commercial origin. According to the EGC, this is also the case here.
The EGC points out in this context that it is precisely not a certification mark. Thus, the EGC suggests that the evidence for the use of a certification mark would probably have been sufficient.
Conclusion
The decision makes clear that even such a frequently used trademark as the sign of the deposit is not necessarily used in the legal sense if the wrong trademark category is chosen.
While the certification mark did not yet exist at the time of the DPG’s trademark application (it was not introduced at the EU level until 2017), the DPG would have been well advised to apply for it when it was introduced. Now, after the decision of the EGC, the trademark is probably ready for cancellation.
There are still many trademark owners who actually use their trademarks as certification marks, but are only owners of individual trademarks. They risk being left without enforceable rights.
A detailed review of the decision by me together with Robert Taeger is published in GRUR-Prax 2003, 593.
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