CJEU: No invalidation due to no genuine use

15-11-2021 Print this page
IPPT20200716, CJEU, ACTC v EUIPO [TAIGA v TIGHA]

Genuine use. Breadth of categories of goods or services for which the earlier mark was registered is a key element of the balance between, on the one hand, the maintenance and preservation of the exclusive rights conferred on the proprietor of the earlier mark and, on the other hand, the limitation of those rights in order to prevent a trade mark which has been used in relation to part of the goods or services being afforded extensive protection merely because it has been registered for a wide range of goods or services. If category goods or services earlier mark defined particularly precisely and narrowly, within which it is not possible to make any significant sub-divisions, proof of genuine use of part of the goods or services suffices. With regard to a broad category which may be sub-divided into several independent subcategories, it is necessary to require proprietor of earlier mark to proof genuine use for all autonomous subcategories. Criterion of the purpose and intended use of the goods or services is essential for defining an independent subcategory of goods.  If the goods concerned have several purposes and intended uses, determining whether there exists a separate subcategory of goods by considering in isolation of each of the purposes that those goods may have will not be possible. The General Court was right not to take into account each of the uses of the goods at issue in isolation (to cover, conceal, adorn or protect the human body), as these different uses are combined for the purpose of putting those goods on the market. Fact that the goods at issue were aimed at different publics and were sold in different shops is not relevant for defining an independent subcategory of goods. 

 

TRADE MARK LAW

 

Appeal. Appellant has filed an application for registration of the word sign “tigha” for a large number of goods in Class 25 (clothing etc.). Intervener Taiga has filed opposition on the basis of the earlier EU word mark TAIGA, which was also registered for (a smaller number of) goods in Class 25. The Opposition Division rejected the opposition, but the Board of Appeal upheld the opposition in part and rejected registration for goods in Class 25. According to the Board of Appeal the genuine use for certain goods in Class 25 of the earlier mark has been proven and there was a likelihood of confusion with the goods of the mark applied for.

 

The General Court EU has dismissed the action in its entirety. The appeal is dismissed. Part of the grounds of appeal were declared inadmissible, because the appellant sought a fresh assessment of the facts or did not indicate which point of the judgment under appeal it was contesting, and the remainder of the appeal was dismissed as unfounded.

 

In this judgment, the Court of Justice EU teaches us that the breadth of categories of goods or services for which the earlier mark was registered is a key element of the balance between, on the one hand, the maintenance and preservation of the exclusive rights conferred in the proprietor of the earlier mark and, on the other hand, the limitation of those rights in order to prevent a trade mark which has been used in relation to part of the goods or services being afforded extensive protection merely because it has been registered for a wide range of goods or services. If the category of the goods or services of the earlier mark have been defined particularly precisely and narrowly, within which it is not possible to make any significant sub-divisions, proof of genuine use of part of the goods or services suffices. However, with regard to a broad category which may be sub-divided into several independent subcategories, it is necessary to require the proprietor of the earlier mark to proof genuine use for all autonomous subcategories.

 

In order to identify a coherent subcategory of goods or services, the Court has held that the criterion of the purpose and intended use of the goods or services at issue is an essential criterion for defining an independent subcategory of goods. If the goods concerned have several purposes and intended uses, determining whether there exists a separate subcategory of goods by considering in isolation each of the purposes that those goods may have will not be possible. Such an approach would not enable independent subcategories to be identified coherently and would have the effect of limiting excessively the rights of the proprietor of the earlier mark, inter alia in that his legitimate interest in expanding his range of goods or services for which his trade mark is registered would not sufficiently be taken into consideration. The General Court was therefore right not to take into account each of the uses of the goods at issue — to cover, conceal, adorn or protect the human body — in isolation, since those different uses are combined for the purpose of putting those goods on the market. The fact that the goods were aimed at different publics and were sold in different shops, is not relevant for defining an independent subcategory of goods, but for assessing the relevant public.

 

IPPT20200716, CJEU, ACTC v EUIPO [TAIGA v TIGHA]

 

ECLI:EU:C:2020:573