Use of figurative element of a composite mark is "genuine use" if distinctive character is not affected

Judgments CIPA v Registrar (IPPT20120619) and Praktiker Bau v Deutsche Patent und Markenamt (IPPT20050707) do not relate to earlier trade marks registered before the date of those judgments. Use of only the figurative element of a composite mark is "genuine use" if the distinctive character of the mark as registered is not altered.

TRADE MARK LAW

Appeal brought by the EUIPO against the GEU judgment (T-24/31, Cactus v OHMI) in which the appeal against the decision of the EUIPO Appeals chamber was upheld to the extent that a number of services in Class 35 (retail trade of plants, flowers and grains, among others) did not fall within the scope of the mark CACTUS and that there was no genuine use in Class 31 (plants, flowers and grains). The appeal is rejected.

According to the EUIPO, the General Court read the judgments in CIPA v Registrar (IP Translator, IPPT20120619) and Praktiker Bau v Deutsche Patent Und Markenamt (IPPT20050707) incorrectly, by ruling that the case-law resulting from those judgments did not have retroactive effect and having concluded wrongly that the designation of the description of Class 35 as defined in the Nice Agreement covers all services of that class, including retail trade of all goods.

In the opinion of the Court of Justice, the General Court correctly ruled that the case-law resulting from CIPA v Registrar did not apply to earlier marks. The same applies to the Praktiker Bau v Deutsche Patent und Markenamt judgment. Such an approach is consistent with the principles of legal certainty and protection of legitimate expectations. The Court was therefore allowed to hold that Cactus wasn't required to specify the goods or the types of goods to which the retail trade relates. The scope of the protection of a trade mark registered before the delivery of those judgments, such as Cactus' word mark (registered on 18 Ocotber 2002), and Cactus' figurative mark (registered on 6 April 2001), cannot be affected by the authority derived from those judgments in so far as they concern only new applications for registration as EU trade marks. The General Court did not err in law in holding that, for the earlier trade marks at issue, the designation of the class heading of Class 35 of the Nice Agreement covered all the services included in that class, including services consisting of the retail of goods.

The second ground of appeal is inadmissable in so far as it concerns the definition of the relevant public and that public's perception of the earlier figurative mark, because these considerations are factual in nature and that it is not for the Court of Justice to rule on them unless there has been a distortion of the facts. The ground is admissible in so far as it concerns the criteria in the light of which genuine use of a trade mark in an abbreviated form should be assessed.

The Court refers to the Specsavers case (IPPT20130718), in which the Court held that the use of a trade mark in a form that differs from the form in which it was registered is regarderd as a use within the meaning of Article 15 of the EU Trade Mark Regulation, as long as it does not alter the distinctive character of the mark. By not imposing strict conformity between the form in which the trade mark is used and the form in which the mark was registered Article 15(1) of the EU Trade Mark Regulation allows its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. It follows that the condition of ‘genuine use’ in the sense of point (a) of the second subparagraph of Article 15(1) of the EU Trade Mark Regulation is satisfied even where only the figurative element of a composite mark is used, as long as the distinctive character of that mark, as registered, is not altered.

The EUIPO can not criticize the General Court for not having verified the extent to which the part of the trade mark omitted, namely the word element ‘Cactus’, had a distinctive character and was important in the perception of the sign as a whole, when the Court rightly compared the sign as used in its abbreviated form to the sign as registered. The Court found that the absence of the word element in the abbreviated version of the earlier figurative mark was not sufficiently important in the perception of that mark as a whole as to alter its distinctive character. Also, the General Court rightly conducted a global assessment of the equivalence of the sign used in an abbreviated form, the stylized cactus alone, and of the sign protected by the earlier figurative mark, the stylized cactus, accompanied by the word element ‘Cactus’.

IPPT20171011, CJEU, EUIPO v Cactus

C‑501/15 P - ECLI:EU:C:2017:750