2(bb) or not 2(bb)? That is the question

After the third Buck's Fizz, members of the IPO's IP Policy
Squad really do find Question 2(bb) hilariously funny

A little behind (still) with his correspondence, this Kat has only just discovered the details of a new case which has been referred by the German Bundesgerichtshof to the Court of Justice of the European Union for a preliminary ruling: It's case C-553/11 Bernhard Rintisch v Klaus Eder [could it be this Klaus Eder, in which case we may have an academic dispute on our hands?] and it's all about the circumstances in which a trade mark can be regarded as having been put to genuine use. The UK's Intellectual Property Office (IPO) has kindly hosted the questions referred to the Court of Justice on its very useful website for the edification of readers of this blog (and everyone else!):

"1. Must Article 10(1) and (2) (a) of Directive 89/104/EEC [which was replaced by consolidating Directive 2008/95 in November 2008 but which many good folk, for reasons of sentiment or affection, continue to cite] be interpreted as meaning that in principle this provision generally precludes a national rule pursuant to which the use of a trade mark (Trade Mark 1) must be presumed even if the trade mark (Trade Mark 1) is used in a form differing from the form in which it was registered, without the differences alterting the distinctive character of the trade mark (Trade Mark 1), and if the trade mark in the form used is also registered (Trade Mark 2)?

2. Is the national provision described above under 1 compatible with Directive 89/104/EEC if the national provision is interpreted restrictively as meaning that it is not applicable to a trade mark (Trade Mark 1) which is registered only in order to secure or expand the protection of another registered trade mark (Trade Mark 2) that is registered in the form in which it is used?

If question 1 is answered in the affirmative or question 2 is answered in the negative:

(a) Is there no use of a registered trade mark (Trade Mark 1) within the meaning of Article 10(1) and (2)(a) of Directive 89/104/EEC

(aa) if the trade mark proprietor uses the form of a sign which differs only in elements from the form in which it (Trade Mark 1) and a further trade mark (Trade Mark 2) of the trade mark proprietor are registered but the differences do not alter the distinctive character of the trade marks (Trade Mark 1 and Trade Mark 2);

(bb) if the trade mark proprietor uses two forms of sign, neither of which corresponds to the registered trade mark (Trade Mark 1), but one of the forms used (Form 1) is the same as another registered trade mark (Trade Mark 2) of the trade mark proprietor and the second form used by the trade mark proprietor (Form 2) differs in elements from both registered trade marks (Trade Mark 1 and Trade Mark 2), without the differences altering the distinctive character of the trade marks, and if this form of sign (Form 2) displays greater similarity to the other trade mark (Trade Mark 2) of the trade mark proprietor?

(b) Is a court of a Member State permitted to apply a national provision (here the second sentence of Paragraph 26(3) of the Law on trade marks (MarkenG)) which conflicts with a provision of a directive (here Article 10(1) and (2)(a) of Directive 89/104/EEC) in cases in which the facts of the case had already occurred prior to a decision of the Court of Justice of the European Union in which indications of the incompatibility of the Member State's legislation with the provision of the directive became apparent for the first time (the judgment of 13 September 2007 in Case C-234/06 11 Ponte Finanziaria v OHIM (BAINBRIDGE) [2007] ECR 1-7333) [noted by the IPKat here] if the national court values the reliance of a party to the court proceedings on the validity of his position, secured under constitutional law, more highly than the interest in the implementation of a provision of the directive?".

If you would like to comment on this case, please email policy@ipo.gsi.gov.uk before tomorrow, 22 December 2011. This Kat apologises again for the delay in bringing this to the attention of readers. Merpel wonders whether there will be anyone there tomorrow to read comments, given that this is the season of goodwill, minced pies and office parties ...

Addendum
 in the IPKat's haste to make up for lost time in posting this, he quite forgot to add a link to a  helpful and informative post by Robert Börner on this reference which readers can find on the MARQUES Class 46 weblog here ("Is Proti the German bridge to Bainbridge?").  Robert has also just told the Kat that there is another similar reference by the Bundesgerichtshof, Stofffähnchen II, I ZR 206/10, which was forwarded to the Court of Justice of the European Union by decision of 24 November 2011 (there's a German-only press release on this case here. No Court of Justice file number for this reference is yet available.