Class headings and protection within them

14-06-2017

Aurélia Marie

The IP Translator decision, which required trademark owners to specify the goods and services applied for, does not apply retroactively to trademarks registered before this decision.

The IP Translator decision, which required trademark owners to specify the goods and services applied for, does not apply retroactively to trademarks registered before this decision.

In June 2012, the Court of Justice of the European Union (CJEU) ruled in the case that:

  • Products and services designated in the trademark application must be identified with sufficient clarity and precision to be able to determine the scope of protection requested.
  • The general indications of the Nice Classification class headings are sufficient if, and only if, the identification of such products and services is sufficiently clear and precise.
  • The applicant who has used the general heading of a class must specify if its application aims to include all of the products or services of that class, or only certain products or services within it. If the request was specific only to certain products or services within such class, it has to specify which products or services it was requesting trademark protection for.

This decision was implemented while the previous EU trademark directive was in force and was implemented by the authorities in EU member states. 

 Inclusion in the list

In a February 2017 decision the CJEU ruled on a case related to a European Union trademark (EUTM) registered in 2002 designating the general class 12 heading “Vehicles; apparatus for locomotion by land, air or water”. 

The case started with a cancellation action for non-use, with the trademark owner then offering proof of use exclusively related to the sale of spare parts for scooters. The Cancellation Division and Board of Appeal held that it could not be deduced from such sales that use of the trademark had been made for vehicles. Thus, the trademark was revoked in class 12.

On appeal, in 2014 the decision of the Board of Appeal was overturned. It was considered that the wording “Vehicles; apparatus for locomotion by land, air or water” must be interpreted as encompassing trademark protection for the totality of products under class 12. 

Therefore even if “spare parts for scooters” was not listed in the class 12 list of goods, the existence of a genuine use for the accessories and spare parts of vehicles that are included in this class should be assessed.

As a result, the Board of Appeal should have examined whether the trademark in question had been genuinely used for these products, and this examination should have been conducted according to the criteria of the Ansul decision of 2003 (C-40/01).

In dismissing the appeal brought, the CJEU specified first that the requirement of specifying products and services outlined by the IP Translator decision when a trademark was filed for a general class heading does not apply retroactively to trademarks registered before this decision. 

"The IP Translator decision, which required trademark owners to specify the goods and services applied for, does not apply retroactively to trademarks registered before this decision."

Therefore the trademark in question is not affected and the wording “Vehicles; apparatus by land, air or water” should be interpreted to protect the trademark for the entire class of products under class 12, even if its owner did not specify that.

It is however to be noted that this decision should have limited effect. Article 28.8 of the EU trademark regulation (2015/2424) provided that owners of EUTMs registered for a general class heading could declare before September 24, 2016 that their intention was to claim protection for products or services other than those explicitly listed in the general class heading, but which fell into the list of products or services of this class.

For trademark owners who did not make use of this possibility, the extent of protection and use of their trademark will now be assessed based on the wording of the class heading only.  

Aurélia Marie is a partner at Cabinet Beau de Loménie. She can be contacted at: amarie@bdl-ip.com 

trademark, class, decision, CJEU, Justice Court, , trademarks, Cabinet Beau de Loménie, Aurélia Marie

WIPR