In Germany, the trademark for one-way deposits is emblazoned on all disposable bottles and beverage cans. The European Court of First Instance clarifies why this trademark is nevertheless not used in a way that preserves the law and how it could have been done better.

Deutsche Pfandgesellschaft is the owner of an EU figurative mark. The trademark has been registered as an individual trademark since June 2007 for various services, including

• Waste management administrative activities
• Technical waste consulting and public relations
• Removal and storage of waste and recycling materials
• Return of empty disposable packaging and disposable packaging containers
• Collecting, recording, transporting and temporarily storing 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 technical implementation of take-back systems for packaging from a wide variety of material groups, sizes and origins, as well as a wide variety of recycling options and from a wide variety of sources

On the basis of this trademark, DPG Deutsche Pfandsystem GmbH filed an opposition against a very similar trademark.

EUIPO denies use of trademark for disposable deposit

During the opposition proceedings, the applicant of the younger sign raised the objection of non-use, as DPG’s trademark is older than 5 years. DPG then submitted photos of a beverage can, a plastic bottle, a label used on automatic packaging recycling and sorting equipment, extracts from its website ” and a document setting out the conditions for participation in the DPG system.

However, this was not sufficient for the Opposition Division of the EUIPO to prove genuine use and therefore rejected the opposition in its entirety. The Board of Appeal of the EUIPO subsequently agreed with this view and found that the DPG’s one-way deposit trademark would not be perceived by the relevant public as an indication that the goods or services in question originated from a particular undertaking under whose control they were manufactured or provided. Rather, the sign is perceived as a descriptive indication informing that the goods belong to a particular category of goods, namely goods with disposable packaging subject to the deposit. Furthermore, the sign is used by professional consumers who participate in that system and are familiar with the applicant’s administrative and legal documents as an official designation 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 trademark

The EGC (Judgment of 06.09.2023 – Ref. T-774/21 ) agrees with the opinion of the EUIPO and denies genuine 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 which, although intended to certify the composition or quality of the goods or services, does not guarantee that the goods or services identified by it originate from a single undertaking under whose control they are produced or provided and which is therefore 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.

In this context, the EGC points out that it is precisely not a certification mark. The EGC thus indicates that the evidence for the use of a certification mark would probably have been sufficient.

Conclusion

The decision makes it clear that even a trademark as widely used as the one-way deposit sign is not necessarily used in the legal sense if the wrong trademark category has been chosen.

Although the certification mark did not yet exist at the time of the DPG’s trademark application (it was only introduced at EU level in 2017), the DPG would have been well advised to apply for it when it was introduced. Now, following 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 laws.

A detailed discussion of the decision by myself together with Robert Taeger is published in GRUR-Prax 2003, 593.