ECJ endorses the concept of serial marks...

...and rules on the prevalence of European provisions relating to the use requirement. After a few less inspiring judgments, the ECJ has broken new ground in endorsing the concept of serial marks in its judgment on the Bainbridge matter. In a visibly angry judgment, the Court dismissed the claimant's arguments, while ruling on a number of interesting questions. The case involved the Italian company Il Ponte Finanziaria owner of a total of eleven (11) Italian word and word/design or word/device trademarks, all consisting of or comprising the word element BRIDGE, as claimant , and the OHIM as defendant. The claimant's marks included, inter alia, word mark registrations for BRIDGE and THE BRIDGE, both as word and as word/device marks. Based on its prior marks, the claimant had opposed the CTM application for the mark BAINBRIDGE (CTM No 940007), claimed for ‘leather and imitations of leather, and goods made of these materials (cl. 18); animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’ and ‘clothing, footwear, headgear’ (cl. 25), basically the very goods for which its *bridge* marks enjoyed protection. When the applicant (intervener in the proceedings before the ECJ) requested the claimant to furnish proof that his marks had been put to genuine use during the five years period preceding the notice of opposition (Art. 43 (2) of the Regulation), the claimant could only establish use of two of his marks. Some of the marks on which the claimant relied were still in their five year grace period, but five out of eleven were not. So the OHIM and the Court of First Instance based their assessment on the remaining six marks. The claimant insisted that the remaining marks, or at least some of them, be taken into account as well based on a) the concept of defensive marks under Italian law, b) the concept of serial marks, and c) the genuine use made of the mark THE BRIDGE through the (incontestable) use of the mark BRIDGE. The concept of defensive marks, which is codified in the Italian Code on intellectual property, protects unused marks. Under that concept, there cannot be revocation for lack of use where the proprietor of an unused defensive trade mark is at the same time proprietor of one or more similar trade marks which are in force, and of which at least one is actually used to designate the same goods or services as those protected by that defensive mark (Art. 24 (4) of the Italian Intellectual Property Code). Inoltre, neppure avrà luogo la decadenza per non uso se il titolare del marchio non utilizzato sia titolare, in pari tempo, di altro o altri marchi simili tuttora in vigore di almeno uno dei quali faccia effettiva utilizzazione per contraddistinguere gli stessi prodotti o servizi. The concept of serial marks is not a proprietary Italian legal concept, but rather a civil law concept, which exists in a number of jurisdictions, including, but not limited to, Germany, where the F…