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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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Some CTMs are More Equal than Others

This appeal to the (European) General Court (Scooters India v Brandconcern T-51/12) relates to a CTM registration for Scooters India’s word mark LAMBRETTA, covering goods in Classes 3, 12 and 18 (amongst other goods) which had been partially revoked by OHIM’s Cancellation Division in respect of all the goods claimed in Classes 3, 12 and 18, except “perfumery, essential oils, cosmetics, hair lotions”. Scooters filed an appeal against this decision and, in December 2011, the First Board of Appeal partially annulled the decision of the Cancellation Division, but only in respect of “soaps”. It dismissed the appeal in respect of the remaining cancelled  goods. In relation to goods in classes 3, 12 and 18 therefore, at this stage Scooters’ CTM covered only “perfumery, essential oils, cosmetics, hair lotions and soaps”.
Scooters brought a further appeal, this time before the General Court alleging infringement of Article 51(2) of the CTM Regulation (CTMR) on two counts, namely:

1)    That the Board of Appeal (BOA) erred in confining its examination to some of the goods in Class 12 covered by the mark; and
2)    That the BOA erred in not taking the actual use of the mark in connection with spare parts for scooters (in Class 12) into account in order to determine whether there had been genuine use of the mark in connection with the goods of which they are an integral part.

On the first point, Scooters claimed that at the date of filing its CTM application for LAMBRETTA (7 February 2000), OHIM’s practice was to accept a reference to a whole class heading as covering all of the goods listed in that class, not just those mentioned in the class heading (pre-IP Translator, C-307/10). They also submitted that the BOA had found that Scooters had made genuine use of their mark in respect of spare parts for scooters. OHIM stated that they had never given the CTM applicant (Scooters India) any guarantee that the CTM registration that was filed in February 2000 would cover all goods in Class 12 and the BOA was within its rights to interpret the CTM registration as covering only the goods listed which were the Class 12 class heading, namely “vehicles; apparatus for locomotion by land, air or water”. Further, the intervener (Brandconcern, the applicant for revocation) also claimed that Scooters’ mark had not been put to genuine use, whether or not the goods were limited to the Class 12 class heading.

When reviewing the decision of the Cancellation Division, the BOA had confined its examination of the Class 12 goods to “Vehicles; apparatus for locomotion by land, air or water” only. Scooters’ evidence of use had been limited to the sale of spare parts for scooters and not to the sale of vehicles or apparatus for locomotion by land, air or water per se. The BOA had rejected Scooters’ evidence of genuine use in respect of spare parts for scooters as not being for goods covered by the class 12 specification of their CTM. The General Court conceded that the BOA should have examined whether spare parts for scooters should be regarded as being included in the Class 12 goods covered by the CTM registration.

The fundamental issue here, in the opinion of the General Court, was whether the IP Translator case had any bearing on this case despite the judgment having been delivered after the decisions of the Cancellation Division and the Board of Appeal in the Scooters India case. On 20 June 2012, OHIM published Communication No. 2/12 of the President, which confirmed that, for CTMs registered before 21 June 2012, the use of all the general indications listed in the various class headings of the Nice Classification showed the CTM applicant’s intention to cover all the goods and services included in the alphabetical list relating to the relevant class. This approach by OHIM was justified by reference to Communication No. 4/03 of 16 June 2003, which stated that OHIM did not object to applications covering general indications or class headings from the Nice classification and that the use of all the general indications listed in a specific class heading amounted to a claim to all the goods/services in that class.

In the opinion of the General Court, Communication No. 2/12 applied the “principles of the protection of legitimate expectations and of legal certainty”, since a legitimate expectation had been created by OHIM because it had given assurances to CTM owners concerning the treatment of applications using the heading of a particular class. In the Court’s view, it was also imperative for trade mark owners and those consulting the CTM Register to be able to determine with certainty the extent of protection conferred by CTMs registered before 21 June 2012 and which covered class headings.

In the present case, OHIM claimed that, since the CTM application for LAMBRETTA was filed on 7 February 2000 and was registered on 6 August 2002 (before the publication of Communication No. 4/03), it had given no assurances concerning the extent of protection afforded by Scooters’ CTM and that the BOA did not necessarily have to assume that Scooters intended to cover all goods in Class 12 or in the alphabetical list related to Class 12.

The General Court disagreed with this, reasoning as follows:

1)    Although OHIM had justified its treatment of CTMs registered before 21 June 2012, it had not in its communications following IP Translator indicated any limitation of the practice it proposed to adopt concerning the treatment of marks registered prior to this date. In particular, OHIM had failed to make a distinction between marks applied for (or registered) before or after 16 June 2003;

2)    The wording of Communication No. 4/03 served to merely explain and clarify OHIM’s previous practice and was not intended to introduce a new practice (i.e. the practice prior to 16 June 2003 was the same as that set out in this Communication);

​3)    OHIM’s previous practice was, at the time, recognised and applied by the General Court in its case law.

The principle of legal certainty required that a CTM proprietor whose mark was registered for the class heading prior to the publication of Communication No. 2/12 was deemed to have intended to cover all the goods/services contained in the alphabetical list in that class. Thus the  CTM registration for LAMBRETTA must be interpreted as covering all of the goods in the alphabetical list in Class 12. Although “spare parts for scooters” per se were not detailed in this (Class 12) list, it did contain many parts and fittings for vehicles. Therefore, some spare parts for scooters were included in the Class 12 goods of Scooters’ CTM and the BOA were therefore required to examine the genuine use of LAMBRETTA in relation to those spare parts. Since they had failed to do so, Scooters’ first complaint was upheld and the contested appeal decision was therefore annulled.

Moving on to Scooters’ second complaint, here they claimed that the BOA had failed to apply the case law of the CJEU which confirms that the actual use of a mark in respect of parts maintains the rights of the CTM proprietor for the goods of which those parts are an integral part. OHIM, on the other hand, asserted that the BOA was correct not to examine the evidence submitted by Scooters and that there were serious doubts as to whether those parts were sold under the LAMBRETTA mark. The intervener (Brandconcern), for their part, submitted that Scooters’ evidence did not prove that spare parts in Class 12 were sold.

The Court held that since the BOA’s decision had been annulled, they (the Board) would now have to examine whether the evidence of use in respect of spare parts was sufficient to maintain the registration in respect of those goods, with particular reference to the criteria set out in the Ansulcase(C-40/01). The Scooters India case has now been appealed to the CJEU (C-572/14P).

Comment

To clarify the situation regarding the use of class headings before OHIM:

a)    For CTMs registered before 21 June 2012, which cover a particular class heading, OHIM will consider that the proprietor intended to cover all of the goods or services contained in the class heading and in the alphabetical list for that class in the edition of the Nice Classification in force at the time of filing the CTM application;

b)    For CTMs filed before 21 June 2012 (but not registered by that date), which cover a particular class heading, OHIM will consider that the proprietor intended to cover all of the goods or services contained in the class heading and in the alphabetical list for that class in the edition of the Nice Classification in force at the time of filing the CTM application UNLESS the proprietor has specified that the CTM application is meant to protect only some of the goods or services within a particular class.

c)    For CTMs filed after 21 June 2012, which cover a particular class heading, OHIM will not consider that the proprietor intended to cover all of the goods or services contained in the class heading and in the alphabetical list for that class in the edition of the Nice Classification in force at the time of filing the CTM application. For such a CTM application, in order to protect all of the goods or services in the class, the proprietor must include in their CTM application as filed,  both the relevant class heading and the full alphabetical list of goods or services taken from that class heading in the most recent Nice classification.