30 November 2023

Use a Trade Mark CORRECTLY or ….. lose it…

Once a trade mark has been registered for over five years, it is subject to use requirements and is vulnerable to attack by a third party on grounds of non-use, to the extent it has not been used. Notwithstanding this, as long as the trade mark has been put to genuine use in the territory where it has been registered, it can be relied on in infringement, opposition or cancellation proceedings.

So, how could it be that, in the case of DPG Deutsche Pfandsystem (DPG) v Užstato sistemos administratorius VšĮ,  DPG was not able to rely on its trade mark registration in an opposition even though it proved without doubt that the mark had been used?

DPG is the owner of an EU trade mark registration for (the “DPG” mark).

It was undisputed on the evidence in this case that this mark had been affixed to around 15-16 billion items of disposable drinks packaging per year and that relevant consumers had a high level of awareness of the trade mark.

The difficulty DPG encountered was that it had registered the DPG mark back in 2007 as the wrong “type” of mark; as an “ordinary” trade mark.  Ordinary trade marks act as identifiers of the commercial origin of goods or services. In legal terms this is described as the essential function of an ordinary trade mark. These trade marks act as a guarantee that goods or services have been manufactured or supplied by a single undertaking, which is responsible for their quality.  Ordinary trade marks therefore enable consumers to make repeat purchases (or avoid making these in the case of a bad experience) of goods and services knowing that the quality of goods or services sold under the trade mark will be consistent.

Less well known are other types of marks which perform very different functions.  Instead of acting as indicators of commercial origin, these other marks can, in the case of “collective” marks, indicate membership of a particular organisation or for “certification” marks, identify that a product or service meets certain standards and/or possesses certain characteristics.

Both the UK and EU Intellectual Property Offices (IPO) allow for registration of certification marks. The registration process for these marks is different to that for ordinary trade marks.  In addition to meeting the usual requirements for registration of ordinary trade marks, the owner of a certification mark must submit “regulations” which are examined by the IPOs.  These regulations cover several issues but essentially, they identify the standards or characteristics that goods or services bearing the certification mark must meet.  Also, the owner of the certification mark must confirm that it is competent to certify and monitor use of the certification mark by others and that it does not itself trade in the goods/services being certified.

These additional administrative requirements mean that registration of a certification mark is a more costly and time intensive process than for an ordinary trade mark. Because of this, businesses may be tempted to seek registration for an ordinary trade mark instead of a certification mark.  As the decision from the General Court (of the Court of Justice of the European Union) in the DPG case demonstrates, this would be an unwise move.  This case serves as a reminder that tribunals and courts will consider the use of a mark in the context of the type of mark that has been registered.

DPG Deutsche Pfandsystem (DPG) is a German organisation that manages a deposit return scheme relating to beverage packaging.  Consumers pay an additional fee when purchasing a beverage and this fee is reimbursed when the beverage packaging is returned to a designated collection point.  The aim of the scheme is to increase the reuse/recycling of beverage packaging by providing consumers with a financial incentive to return empty beverage containers.  The mark used to indicate to consumers that a beverage container is part of the deposit return scheme.

DPG’s EU trade mark registration for the DPG mark protects a wide range of goods and services in numerous classes including waste management in class 35 and recycling of waste and rubbish; sorting of drinks containers in class 40.

In 2015 Užstato, a Lithuanian entity, filed an EU trade mark application for covering various services including organisation and management of empty bottle collection and recycling in class 35. DPG opposed Užstato’s application based on its earlier registration for the DPG mark which had been in use for many years. The opposition was rejected on the grounds that the two signs were not deemed confusingly similar. DPG, unhappy with this outcome, filed a successful appeal.  As a result, it became necessary for the opposition case to be considered in more detail. This included reviewing evidence of use of the DPG mark to establish whether this evidence was sufficient to support DPG’s EU registration for this mark given that it had been registered for over five years.

The evidence demonstrated that the DPG mark had been used to a very significant extent in the relevant period  but this was nevertheless deemed insufficient.

The DPG mark was registered as an “ordinary” trade mark, so DPG needed to prove that its use of this mark fulfilled the essential function of an ordinary trade mark, namely that consumers understood that goods bearing this sign had been manufactured or supplied by a single entity.

DPG failed to do this and at the appeal to the General Court, it was concluded that;

there is nothing to suggest that business consumers will perceive the marking of the earlier sign on the terms and conditions of participation in the DPG system, irrespective of its certification function, as an indication of the commercial origin of the services covered by that sign”


“[DPG] has not submitted sufficient evidence to establish that the earlier sign has been put to genuine use in accordance with the essential function of individual marks within the European Union in respect of the services for which it was registered.”

In other words, the evidence showed use of the DPG mark as a certification mark and accordingly it could not support the registration of this mark as an ordinary trade mark.

So, despite the very significant commercial use made of the DPG mark ,this use could not be taken into account in the opposition proceedings.

This decision highlights the importance of registering the correct type of mark. If a mark is not acting as a guarantee of single commercial origin, an ordinary trade mark registration should not be sought.  Instead, and despite the additional financial and administrative burdens, businesses should seek protection for a different type of mark such as a certification or collective mark; depending on the function performed or intended to be performed by the mark. Otherwise, it will not be possible to rely on a trade mark registration to prevent third parties using or registering an identical or similar mark. The registration will also likely be cancelled if challenged by a third party.

It is interesting to note that DPG has maintained its registration for as its validity was not challenged, and has now also registered the following logos and as EU certification marks.