General Court interprets list of goods based on IP TRANSLATOR

European Union

Since the judgment of the Court of Justice of the European Union (ECJ) in Chartered Institute of Patent Attorneys v Registrar of Trademarks (Case C-307/10) (IP TRANSLATOR), it was hoped that the clarifications given by the ECJ would suffice to handle all kinds of cases. However, the answers given by the ECJ were not sufficiently clear, so problems continue to crop up.

In two recent cases (Case T-51/12 and Case T-132/12) involving two trademarks consisting of the word 'Lambretta' (Nos 1495100 and 1618982), the General Court had to interpret the list of goods based on the principles laid down in IP TRANSLATOR in respect of the use requirement.

In the case concerning trademark No 1495100, which covered, among other things, “vehicles; apparatus for locomotion by land, air or water” in Class 12 of the Nice Classification, the General Court had to decide whether use of the trademark for goods not specifically mentioned in the list of goods, but falling within this class, could be considered sufficient to fulfil the use requirement. It was clear that the owner of the trademark had not used the trademark for the exact products specified in the list of goods in Class 12; however, the owner had submitted evidence that the mark had been used for spare parts of scooters.

The Board of Appeal did not consider in detail whether genuine use of the trademark for spare parts of scooters had been proven, but simply arrived at the conclusion that no evidence had been submitted to demonstrate the use of the trademark for apparatus for locomotion by land.

This led to the question of whether use of a mark for goods which are not specifically listed in the list of goods, but which are included in the relevant class, is to be considered when assessing the genuine use of a mark. In the instant case, the trademark owner had filed in Class 12 for the entire class heading ("vehicles; apparatus for locomotion by land, air or water"), which did not include spare parts of the products named in that heading. Moreover, the alphabetical list of Class 12 goods did not specifically include spare parts for scooters.

In IP TRANSLATOR, it was stated that, when filing an application covering a class heading, an applicant seeking protection for all the goods within that class must expressly or conclusively state that it is seeking protection for all the goods contained in that class according to the alphabetical list (obviously, all products are not contained in the alphabetical list, as it is impossible to enumerate them all).

The General Court found that, as the mark was filed for the Class 12 heading, and in view of Communication 4/03 of the President of OHIM of June 16 2003, spare parts were covered by the contested trademark. The General Court came to the conclusion that all the goods that fell within this class were comprised by the heading. The question of whether Communication 2/12 of the President of OHIM of June 20 2012 would bring some changes was not examined in detail, because the trademark at issue was registered before 2012 and the communication contained a statement that the new principles should not apply to earlier trademarks. Moreover, the General Court took the position that Communication 2/12 only summarised the interpretation of OHIM, but did not establish new rules.

The General Court assumed that, although spare parts were not mentioned specifically in the alphabetical list of Class 12, they would nevertheless be included in that class, because the list contained references to many spare parts such as “vehicle wheels” or “pneumatic tires”. Therefore, the court came to the conclusion that the Board of Appeal was required to examine the evidence submitted by the trademark owner concerning the use of the trademark LAMBRETTA for spare parts for scooters.

OHIM claimed that there was no evidence that the trademark owner had the intention of covering all goods in Class 12. The Board of Appeal argued that it had to apply the principle of legal certainty - that is, a competitor must know which products are covered by the trademark of another party. This approach was refuted by the General Court, which stated that the issue of whether the trademark owner had the intention of covering all the goods in Class 12 could be examined only in the light of the principle of the protection of legitimate expectations, but not in the light of the principle of legal certainty. This is due to the fact that the principle of legal certainty protects the public interest, while the principle of the protection of legitimate expectations protects a particular party (in the instant case, the trademark owner).

The General Court instructed the Board of Appeal to examine not only whether the trademark LAMBRETTA had been used for spare parts for scooters during the relevant period of five years, but also whether the trademark owner had sold scooters under the trademark LAMBRETTA even before the relevant period. This raises further issues, which the General Court did not answer. First, would it be sufficient to prove genuine use for spare parts of scooters in order to maintain the trademark for "vehicles for locomotion on land" generally, or even for the other products in Class 12? Second, would there be any legal consequences to be drawn from a finding that the trademark owner had marketed scooters before the five-year period? Would this mean that use for spare parts during the relevant period would maintain the trademark at least for scooters, provided that the trademark owner had used and marketed scooters before that period, and would protection not extend to scooters if the trademark had been used only for spare parts for scooters and not for scooters as such?

Arguably, the decision raises more questions than it answers.

The second decision, which concerned trademark No 1618982, dealt with a rather interesting issue. The findings of the Cancellation Division on the evidence submitted by the trademark owner were not expressly challenged before the Board of Appeal, and the board thus decided only on the evidence submitted to it, without relying on the evidence which had been rejected by the Cancellation Division.

The General Court came to the conclusion that all evidence has to be examined together and that the Board of Appeal must decide on the issue of genuine use in the light of all relevant aspects of fact and law. The board cannot exclude parts of the evidence because they were not expressly contested. Only this approach allows a global assessment, as prescribed by law. In order to corroborate its opinion, the General Court explained that the trademark owner had referred specifically to a witness statement, and this witness statement was included in the evidence which had been disregarded by the Cancellation Division.

It is good to know that evidence which is not expressly questioned on appeal must still be examined, as the Board of Appeal must consider relevant matters of fact and of law within the framework of its global assessment. The decision thus brought some clarification, which was necessary and will be helpful in the future.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna

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