On 11 October 2017, the Court of Justice of the European Union ("ECJ") handed down a judgment in a case concerning the genuine use requirement for trade marks. The ECJ held that the use of a figurative element of a mixed trade mark may suffice to demonstrate a "genuine use" of the trade mark.
The facts of the case relate to the registration of the figurative sign "CACTUS OF PEACE – CACTUS DE LA PAZ" by a company called Del Rio Rodríguez.
On 12 March 2010, Cactus SA ("Cactus") filed a notice of opposition on the basis of the earlier EU word mark CACTUS and an earlier figurative mark consisting of a stylised cactus and the word element "CACTUS".
In its judgment, the ECJ dismissed the appeal of the European Union Intellectual Property Office ("EUIPO") against the judgment of the General Court of 15 July 2015 in Cactus v OHIM (T-24/13). According to EUIPO, the General Court based its findings (i) on an erroneous interpretation of the IP Translator (C-307/10, 19 June 2012) and Praktiker Bau (C-418/02, 7 July 2005) judgments; and (ii) on an incorrect interpretation of the "genuine use" requirement within the meaning of Article 15(1) of Regulation No. 207/2009 of 26 February 2009 on the Community trade mark ("CTMR").
In its appeal before the ECJ, the EUIPO argued that it follows from IP Translator that the scope of general indications of a class heading of the Nice Agreement is limited to all the goods or services in the alphabetical list of a particular class. It further contended that it follows from the Praktiker Bau case that although retail trade in goods constitutes a service in Class 35 of the Nice Agreement, the applicant must nevertheless be required to specify the types of goods to which the retail relates. Although the IP Translator and Praktiker Bau judgments were both given after the registration of the trade marks of Cactus, the EUIPO contended that these judgments limit the scope of protection of the Cactus trade marks due to the retroactive effect of ECJ case law.
The ECJ did not accept the EUIPO's arguments. It referred to its Brandconcern judgment (C-557/14 P) of 16 February 2017, in which it held that the IP Translator judgment does not concern trade marks that were already registered at the date of that judgment's delivery. Further, the ECJ pointed out that in Praktiker Bau it had held that the specification requirement only relates to applications for registration as EU trade marks and does not concern the protection of trade marks already registered at the date of the judgment. Accordingly, the earlier word and figure marks "Cactus" can cover all the goods and services within Class 35 and Cactus is not required to specify the types of goods to which the retail trade relates.
During the proceedings, the defendant claimed that Cactus could not rely on its mixed figurative and word mark since it had not been used. Indeed, Cactus had failed to provide evidence of "genuine use" of the mixed trade mark containing figurative and word elements. Nevertheless, the ECJ held that the use of the figurative part of the trade mark could suffice to demonstrate "genuine use". Referring to its judgment in the Specsavers case (C—252/12), the ECJ held that the use of a trade mark in a form which differs from the form in which it was registered is regarded as "genuine use" within the meaning of Article 15(1) CTMR provided that the distinctive character of the mark in the form in which it was registered is not altered. In the case at hand, the ECJ held that the condition of "genuine use" is satisfied even if only the figurative element of a composite mark is used, as long as the distinctive character of that mark, as registered, is not altered. The ECJ concluded that the absence of the word element "Cactus" in the abbreviated version of the earlier figurative mark was not sufficiently important in the perception of that mark as a whole as to alter its distinctive character.
Furthermore, EUIPO argued that the General Court had erred in law since it deduced the equivalence of the sign used in an abbreviated form (the stylised cactus alone) and of the registered sign (stylised cactus + word element '"Cactus") solely from the semantic equivalence of their word and figurative components, without carrying out an overall assessment. However, the ECJ held that the General Court rightly conducted a global assessment of the equivalence of the sign in an abbreviated form and of the registered sign. Furthermore, the General Court was under no obligation to verify the extent to which the part omitted (i.e., the word element "Cactus") had a distinctive character and was important in the perception of the sign as a whole.
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