The General Court has confirmed that the purpose or intended use of a product is fundamental in defining a sub-category of goods or services.
On the 16th May 2013, the EU General Court annulled a decision of an OHIM Board of Appeal rejecting an application to revoke a Community trade mark (CTM) for at least some of the goods protected on the basis of lack of genuine use.
Background
The mark ALARIS had been registered for, amongst other things, a comprehensive list of goods in Class 10 falling under the broad term "medical instruments and equipment".
At first instance, the OHIM Cancellation Division held that the use made of ALARIS was sufficient for the owner to retain all goods listed in Class 10.
This was on the basis that genuine use had been proven for some goods and the remaining goods could be considered variations having the same basic field of application and the same basic purpose, all falling within the sub-category category "infusion pumps and controllers" .
It is established case law that a trade mark owner should not be stripped of protection in respect of goods that are not in essence different to goods for which genuine use has been proven and belong to the same indivisible group.
The goods for which use was proven were: "infusion systems, syringe pumps, volumetric pumps, disposable thermometers, thermometers" (the goods in use).
The Board of Appeal upheld this first instance decision, concluding that the remaining goods belonged to the "natural extension field" and the owner should not be stripped of protection for such goods.
General Court decision
The Court has ruled that the Board of Appeal did not correctly apply the case law established in the RESPICUR case (Mundipharma v OHMI- Altana Pharma: Case T-256/04) in reaching this conclusion.
It held that the Board wrongly bundled all goods in Class 10 within the sub-category "infusion pumps and controllers" on the basis that the remaining goods were of the same nature as the goods in use, despite the fact that they had a different intended purpose.
Indeed, the nature of use was not a criterion available to the Board when applying the criteria established in the RESPICUR case for devising sub-categories.
The Board also wrongly extended the protection derived from goods in use on the basis that all the Class 10 goods were used by anaesthesiologists and intensive care professionals.
The Board's approach did not recognise that consumers are searching for a product that will meet their specific need when bundling the Class 10 goods into a single sub-category.
Consequently, the Court held that the Board of Appeal was wrong to not find various sub-categories within the broad term "medical instruments and equipment" and annulled its decision in so far as it allowed the trade mark owner to retain all goods in Class 10.
Comment
This case confirms that the intended use of a product is imperative when the authorities are devising sub-categories within a broad protected term.
An Applicant for Revocation should emphasise this requirement in respect of all unused and heterogeneous goods and services so the trade mark owner is stripped of protection for goods and services that overlap or are in direct conflict with those of interest to the Applicant.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
