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14-04-2017 » Genuine Use of trademarks in the light of the IP TRANSLATOR decision

Five years after having rendered its decision the 19th of June 2012 in the case known as IP Translator, the European Court of Justice now answers the question of the use of a trademark registered for a general class heading of the international classification.

One knows that in the IP Translator decision, the ECJ ruled the following:

  • Products and Services designated in the trademark application must be identified with sufficient clarity and precision as to be able to determine the scope of protection requested.
  • The general indications of the Nice Classification class headings are sufficient if, and only if, the identification of such products and services is sufficiently clear and precise.
  • The applicant who has used the general heading of a class must specify if his application aimed to include all of the products or services of that class or only certain products or services within said class.  If the request was specific only to certain products or services within such class, he had to specify which products or services he was requesting trademark protection for.

It must be noted that this decision rendered in light of the 2008/95/CE directive of the 22 October 2008 for the harmonization of trademark laws, had to be implemented by the authorities of each European Member State.  As a result, the General Director of the French PTO published the following statement:

The INPI considers that the usage of a General Class Heading, followed by a claim for protection for the entirety of products or services of the class in question, does not fulfill the required conditions of precision and clarity.

Therefore, any trademark application which contains such claim will automatically be notified resulting in a request for such claim to be withdrawn, failing which the application will be subject to partial rejection and will be registered only for the products and services explicitly designated.

In order to specify that the application designates all products or services of one class, the applicant must mention in the list of products or services designated in the application, all the products or services which belong to this class according to the classification in vigor at the moment of filing.  This is the only way to fulfill the requirement of clarity and precision.”

The decision of IP Translator applies to the general class headings of classes of both goods and services. The EUCJ did not, however, specify the temporal applicability attached to the interpretation hereby given to the Directive.

It is notably this last point upon which the EUCJ addresses in its decision of the 16th of February 2017 (C-577/14P, Brandconcern BV). 

At issue in this case was a European trademark registered in 2002, designating the general class 12 heading “Vehicles; apparatus for locomotion by land, air or water.”  In response to a cancellation action for non-use, its owner furnished proof of genuine use exclusively related to the sale of spare parts for scooters.  The cancellation division and the Board of Appeal held that it could not be deduced from the sale of spare parts, that use of the trademark had been made for vehicles.  Thus, the trademark was revoked for non-use in class 12.

On appeal, the 1st Instance Court of the European Union on September 30, 2014, overturned the decision of the Board of Appeal.  It considered that the wording “Vehicles; apparatus for locomotion by land, air or water” must be interpreted as encompassing trademark protection for the totality of products under class 12.  Therefore even if “spare parts for scooters” was not listed as such in the list of goods falling in class 12, the existence of a genuine usage for the accessories and spare parts of vehicles, that are included this class, should be assessed.  As a result, the Board of Appeal should have examined if the trademark in question had been genuinely used for these products, and this examination should have been conducted according to the criteria of the Ansul decision of 11 of March 2003 (C-40/01).

To dismiss the appeal brought by the applicant in the cancellation action, the EUCJ specifies firstly that the requirement of specificity of products and services outlined by the IP TRANSLATOR decision, when a trademark was filed for a general class heading, does not apply retroactively to the trademarks that were registered prior to this decision.  Therefore the trademark in question in the decision is not affected, and the wording “vehicles; apparatus by land, air or water” should be interpreted as to protect the trademark for the entire class of products under class 12 even if its owner did not specify therewith.

It is however to be noted that this decision should have a limited scope for future rulings.  Article 28.8 of the EU Regulation 2015/2424 of the 16th of December 2015, modifying the EU Regulation 207/2009, provided indeed as a transitional provision that holders of European trademarks registered for a general class heading could declare before the 24th of September 2016, that their intention was to claim protection for products or services other than those explicitly listed in the general class heading, but falling in the list of products or services of this class. For those trademark holders who did not make use of this possibility, the extent of protection and use of their trademark will be assessed, based on the wording of the class heading only.

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