General Court: OHIM should not have 'bundled' goods when assessing proof of use

European Union

In Aleris Holding AB v Office for Harmonisation in the Internal Market (OHIM) (Case T-353/12, May 16 2013), the General Court has issued its decision in an appeal brought by Aleris Holding AB against the decision of the Fifth Board of Appeal of OHIM of May 11 2012 in relation to revocation proceedings against the trademark ALARIS (CTM No 571521), owned by Carefusion 303 Inc (previously Alaris Medical Systems Inc).  

Alaris Medical Systems Inc filed an application to register ALARIS as a Community trademark (CTM) on June 16 1997 for goods and services in Classes 10, 37 and 42 of the Nice Classification, and this application matured into registration on July 3 2001. The list of goods in Class 10 was worded in a very detailed manner, and included the following wording:

"Medical instruments and equipment, namely: infusion pumps and controllers, including… [specific listing of a number of goods]....; ..... including thermometers for medical use, disposable thermometers... [further listing of goods]..."

Under Article 15 of the Community Trademark Regulation (207/2009), a CTM must be put to genuine use in the European Union within a period of five years from registration in respect of the goods and services for which it is registered, and use must not be suspended during an uninterrupted period of five years. If the use requirements under Article 15 are not fulfilled, the trademark registration may be subject to revocation.

In November 2008 Aleris Holding filed an application for revocation of the trademark ALARIS on the grounds that the trademark had not been put to genuine use (see Article 51(1)(a) of the regulation). The request for revocation was directed against all the goods in Class 10 and all the services in Classes 37 and 42.

OHIM invited the trademark owner to provide proof of use of its mark. In order to maintain the registration, Carefusion had, in principle, to provide proof of use for each of the goods and services covered by the registration. However, case law in connection with the interpretation of the requirement to file proof of use in connection with trademarks used as basis for an opposition (Articles 42(2) and (3) of the regulation and Articles 12 and 13 of the Trademarks Directive (2008/95/EC)) has clarified that, in some instances, proof of use for some goods/services belonging to a category of goods/services shall suffice to prove use for the whole category (see Reckitt Benckiser (España) v OHIM (Aladin) (Case T-126/03) and Mundipharma v OHIM (Case T-256/04)).     

The trademark owner submitted different material showing use of its trademark for "infusion pumps, volumetric infusion pumps, syringe pumps, thermometers and disposable thermometers", as well as material showing use of the mark in connection with (some) services.

Based upon the evidence submitted, OHIM decided to revoke the trademark for all the services in Class 42, but to maintain the mark for all the goods in Class 10 and the services in Class 37. All the goods in Class 10 described as “medical instruments and equipment" were found to belong to the same sub-category of goods.    

Aleris Holding filed an appeal requesting the revocation of the mark for the services in Class 37 and all the goods in Class 10, except for volumetric infusion pumps and syringe pumps, being the only goods that it considered to have been put to genuine use.

The Fifth Board of Appeal of OHIM dismissed the appeal. As proof of use had been submitted with respect to certain pumps and thermometers, the Board of Appeal found that the Cancellation Division was right to extend the finding of genuine use to all the goods in Class 10, as the remaining goods were seen to be analogous in nature and purpose, or complementary, to those in respect of which genuine use was expressly shown.     

On appeal to the General Court, Aleris Holding pleaded:   

  • infringement of Articles 51(1)(a) and (2) of the regulation in respect of the goods in Class 10; and
  • infringement of Article 51(1)(a) of the regulation in respect of the services in Class 37.

Regarding the first plea, Aleris Holding argued that, by bundling all the goods in Class 10 within one single category, the board had extended the protection of the trademark to goods in respect of which genuine use had not been proved.  

The General Court stated that case law regarding the interpretation of Article 43 - now 42 - of the regulation is also applicable to Article 51.

In Aladin - regarding the interpretation of Articles 43(2) and (3) of Regulation 40/94 - the court said (at Paragraph 45):

"…if a trademark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trademark has actually been used belong [this part was reiterated by the General Court in Case T-353/12 at Paragraph 18]. However, if a trademark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition."

In the present case, the Board of Appeal had bundled all the goods in Class 10 into one sub-category (ie, "medical instruments and equipment"), stating that all the goods were used by anaesthesiologists and professionals in the intensive care and palliative care units of clinics and hospitals, and that the products had the same nature. The court disagreed with the board as to the common use of the products, and also stressed that justifying the bundling of the goods by their nature was not correct, as this criterion does not feature among the case law criteria which would allow the formation of sub-categories. What is fundamental when defining a sub-category within a main category is the purpose or intended use of the products/services, and not their nature.

As for "controllers", those were found to belong to the same sub-category as "infusion pumps". Therefore, the trademark could not be cancelled for these goods, even if genuine use of the mark for "controllers" had not been shown, as genuine use had been shown for goods belonging to the same sub-category.

Since the board had extended the protection of the mark beyond what is provided for in the regulation and in case law, the General Court annulled the decision insofar as it rejected the application for revocation for the goods in Class 10 that did not fall within the same sub-category as that for which proof of use had been shown (or for which use was not contested). Thus, the principal category of "medical instruments and equipment" could - in relation to the goods in question - be divided, other than in an arbitrary manner, into more than one sub-category. 

In reaching its conclusion, the court took the principle of "natural extension" into consideration - that is, the trademark owner must not be stripped of all protection for goods which are not identical to those in respect of which genuine use has been proven, but are not in essence different (see Paragraph 19, referring to Aladin at Paragraph 46). 

Arguably, it is correct to hold that "medical instruments and equipment" is a category of goods that includes different sub-categories capable of being viewed independently. However, one must remember that the consequences of failing to provide proof of use is different under Articles 51 and 43, and it is thus important to ensure that the goods and services for which a mark is cancelled belong to a group/category that is sufficiently distinct from the category of goods/services for which proof has been established.

With regard to the second plea, the court agreed with the Appeal Board and rejected the plea.

Lars Segato, Gorrissen Federspiel, Aarhus

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