Trademark jurisprudence: Legal obligation of use of a complex mark and scope of the general heading of a class
The decision issued by the ECJ on October 11, 2017 provides two kinds of significant information to EUTM’s holders:
- On the one hand, the Court asserts that marks registered for the general heading of a class before the IP TRANSLATOR judgment of 19 June 2012, covering all the goods or services falling within that class, can be claimed in an opposition that would be filed before 24 September 2016, which is the deadline given to EUTM’s holders to adapt the wording of their products/services.
- On the other hand, owners of a complex trademark consisting of both a denomination and a logo comply with the legal obligation of use once they use the figurative element comprised in their trademark, provided that it has the same semantic content as the verbal element comprised in the trademark and that the use of this figurative element alone does not alter the distinctive character of that mark.
This decision follows an opposition lodged by the company CACTUS, owner of the EUTM CACTUS No. 963694 and no. 963595, against the EUTM CACTUS OF PEACE CACTUS DE LA PAZ. Upon appeal of the company CACTUS, the Tribunal overruled the EUIPO’s decision rejecting the opposition on the ground that the “retail services of natural plants and flowers, seeds; fresh fruit and vegetables” in class 35 of the contested trade marks were not covered by the general heading of that class covered by the earlier trademarks. Finally, the Tribunal held that CACTUS was well founded in its opposition as it proved the use of the stylized cactus design of its complex trade mark for the said services.
EUIPO appealed against this decision raising the two following arguments:
1. The EUIPO first argued that the earlier trademarks could not cover "retail services” on the ground that the cases law IP TRANSLATOR of 19 June 2012 and PRAKTIKER BRAU of 7 July 2005 respectively provide for the obligation for the applicant whose application refers to the general heading of a class to specify whether the claim extends to all the goods or services contained in the alphabetical list as well as to specify the goods concerned by those services.
The ECJ rejects this argument on the ground that the marks registered under the general heading of a class before the IP TRANSLATOR judgment are protected for all goods or services falling within that class. As a result, the prior trademarks of CACTUS necessarily cover these retail sale services.
2. The EUIPO also contested that a serious use could be proved on the basis of the use of the sole figurative element of a complex mark.
This second argument is also rejected on the grounds that (i) the stylized cactus and the verbal element “cactus” referred to the same semantic content (ii) this verbal element could not be considered as having a distinctive character different from that of the stylized cactus (iii) and that its absence in the abbreviated version of the figurative mark was not sufficiently important to alter the distinctive character of the mark taken in its entirety.
ADVICE FROM LAVOIX EXPERTS
By refusing a retroactive application of the IP TRANSLATOR case law, the Court is showing common sense by allowing oppositions filed before 24 September 2016 to be examined in respect of all the goods and services covered by the class. Indeed, the IP TRANSLATOR and PRAKTIKER BRAU decisions can only apply to trademarks registered after their issuance.
The flexibility showed by the Court in assessing the legal obligation of use of a mark has the merit of taking account the necessity to adapt a sign to their holder’s promotional and commercial needs. However, this decision may surprise since, as argued by the EUIPO, it is not certain that the term “cactus” has the same meaning in all EU countries. However, the Court of Justice has here confined itself, in accordance with its jurisdiction, to validate the reasoning of the General Court of the European Union, and the scope of that judgment must be reserved for marks whose figurative element coincides exactly with the verbal element.