The Austrian Supreme Court has given an interesting decision clarifying the grounds for revocation of an EU trade mark in Article 58 of the EUTM Regulation.

In a decision dated 15 March 2021, the Supreme Court upheld the lower courts’ decision to revoke a word and figurative mark for 'Pauscha Austria – since 1875' (pictured) which was applied for in 2013 and registered for goods and services in classes 20, 37 and 40.

The revocation action was brought by a member of the Pauscha family, which has a long tradition of making wooden barrels in Austria (the applicant), against a company (the defendant) that had acquired the trade mark and the domain name www.pauscha.at, as well as some other assets, from an insolvent company previously owned by the Pauscha family.

The defendant also makes wooden barrels, but with a different construction to those made by the Pauscha family. It states on its website: “Our traditional craft company, Pauscha Austria, has been making barrels and casks for the refinement of wines and distillates since 1875. The company Pauscha Austria – since 1875 continues the long tradition of barrel making.”

In response to an infringement claim filed by the defendant, the applicant brought the revocation action as a counterclaim. It argued that the use of the trade mark was misleading.

Article 58(1)(c) of the Regulation provides that the rights of the proprietor of an EUTM shall be revoked “if, in consequence of the use made of the trade mark by the proprietor of the trade mark or with his consent in respect of the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services”.

In the Elizabeth Emanuel case (C-259/04), the CJEU said the misleading nature of the mark must relate to the characteristics and properties of the labelled product in terms of type, nature, quality or geographical origin.

The Supreme Court noted that the question is whether the mark itself is liable to mislead the public, regardless of whether any clarifying language could be added or the misleading part be deleted when the mark is used.

In this case, said the Supreme Court, the EUTM includes an indication of tradition (“since 1875”) and this would mislead the public as to the quality and excellence of the products. Therefore the misleading nature of the use of the EUTM related to the nature and quality of the marked products. It concluded that

the decisive factor is whether an EU trade mark, by its use as such alone, is liable to mislead the public, in particular as to the nature, quality or geographical origin of the marked goods or services. The likelihood to mislead must relate to the characteristics and qualities of the marked product. This also applies, for example, to an indication of tradition in the EU trade mark which subsequently leads to misconceptions about quality characteristics of the marked product. In such a case, too, the misleading nature is brought about solely by the use of the trade mark as such (unofficial translation).

The Court’s judgment can be read on its website (in German) here.

The illustration shows the Palace of Justice in Vienna, which houses the Supreme Court