Rule set out in CIPA v Registrar judgment not applicable to registration of trade marks before delivery of that judgment

Print this page 22-03-2017
IPPT20170216, CJEU, Brandconcern v Scooters India

TRADE MARK LAW

 

General Court did not commit an error in law by granting Scooters India protection for all goods listed in the alphabetical list of class 12: the rule set out in the judgment CIPA v Registrar (IPPT20120619) on the interpretation of the application for registration is not applicable to the registration of trade marks which took place before the delivery of that judgment

 

"In that regard, it must be borne in mind that although, in paragraphs 21 to 24 of the judgment under appeal, the General Court examined the issue of the impact of the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361), and, in particular, paragraph 61 of that judgment, on the interpretation of the application for registration of the trade mark LAMBRETTA, it also found that the Court of Justice had not limited the temporal effects of that judgment.


In paragraph 61 of the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361), the Court of Justice thus took the view that, in order to respect the requirements of clarity and precision imposed by Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25), the applicant for a national trade mark who uses all of the general indications listed in the heading of a particular class of the Nice Agreement in order to identify the goods and services for which the protection of the trade mark is sought must specify whether the application for registration is intended to cover all the goods or services included in the alphabetical list of the particular class concerned or only some of those goods or services. If the application relates to only some of those goods or services, the applicant will be required to specify which of the goods or services in that class are intended to be covered.


However, it is important to bear in mind, in the first place, that paragraph 61 of that judgment does not concern the proprietors of trade marks which have already been registered, but solely applicants for trade marks.
In the second place, in paragraph 61 of that judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361), the Court of Justice limited itself to specifying the requirements to which new applicants for national trade marks remain subject, who use the general indications of a class in order to identify the goods and services for which protection as a trade mark is sought. Such requirements, as the Advocate General stated in point 64 of his Opinion, help to prevent the situation in which it is not possible to determine with certainty the scope of the protection afforded by a trade mark when a trade mark applicant uses all the indications included in the heading of a class.


It cannot, therefore, be held that the Court of Justice, by the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361), sought to question the validity of the approach set out in Communication No 4/03 as regards trade marks registered before the delivery of that judgment. Consequently, the rule set out in paragraph 61 of that judgment is not applicable to the registration of the trade mark LAMBRETTA, which took place before the delivery of that judgment.


32. Consequently, by finding, in paragraph 35 of the judgment under appeal, that, according to the approach set out in Point V of Communication No 2/12, it was appropriate for the words “vehicles; apparatus for locomotion by land, air or water”, corresponding to the goods mentioned under the heading of Class 12 of the Nice Agreement, featuring in the application for the trade mark LAMBRETTA, to be interpreted as seeking to protect that trade mark for all the goods in the alphabetical list of Class 12, the General Court did not commit an error in law capable of justifying setting aside the judgment under appeal."
 

IPPT20170216, CJEU, Brandconcern v Scooters India

 

C-577/14 P - ECLI:EU:C:2017:122