INTA Bulletin

INTA Bulletin

December 15, 2017 Vol. 72 No. 21 Back to Bulletin Main Page

EUROPEAN UNION: CJEU Confirms IP Translator Decision Has no Retroactive Effect

In European Union Intellectual Property Office (EUIPO) v. Cactus SA, Case C‑501/15 P, October 11, 2017, the Court of Justice of the European Union (CJEU) confirmed that its 2012 landmark ruling in IP Translator (Case C‑307/10, June 19, 2012) does not have retroactive effect.

The case concerned an application by a Spanish individual to register CACTUS OF PEACE/CACTUS DE LA PAZ as an EU trade mark (EUTM). Cactus SA, a Luxembourg company, opposed the application based on its earlier EUTM registrations for the word mark CACTUS (registered in 2002) and a figurative mark also incorporating the word “cactus” (registered in 2001). The main issue in the opposition was whether the applicant sought to register the mark for goods and services which are identical or similar to those covered by Cactus SA’s prior registrations. The assessment of the similarity of goods and services depended on the proper interpretation of the CJEU’s ruling in IP Translator.

Prior to IP Translator, the EUIPO (or OHIM as it was called then) deemed that trademark registration for a class heading covered all of the goods or services in that class. In IP Translator, the CJEU held that a trademark application must identify the goods/services to be covered by the mark with “sufficient clarity and precision” to enable others, such as competitors, to determine the scope of protection provided by the mark. It held that a class heading could, in principle, be used for this purpose, but an applicant was required to specify whether its application was, in fact, intended to cover all the goods or services included in that class or, if not, which goods or services were to be covered.

Cactus SA’s trademarks (Cactus SA being the opponent in the case) covered only class headings. As a consequence, the important question before the CJEU in the Cactus case was whether the scope of the specifications should be interpreted in line with the pre‒IP Translator approach as covering all of the goods or services in the relevant class, or whether Cactus SA was bound by IP Translator and required to specify more precisely the goods and services for which its marks were registered.

The CJEU held that IP Translator did not have retroactive effect, and as a result, did not affect the scope of protection of trademarks registered pre‒IP Translator. Cactus SA could therefore rely, in line with the practice which was in place when it filed its applications, on all of the goods or services in classes that contained class headings.

The decision of the CJEU is logical insofar as it gives trademark owners with national or EUTMs predating IP Translator certainty on the scope of protection of those registrations in portfolios which cover class headings. On the other hand, the decision of the CJEU represents a significant shift from the intention of the EU legislator, EUIPO, and the Convergence Programme (the effort to harmonize EU IP office practices). Article 28(8) EUTM regulation (now, after re-codification: 33(8)), allowing owners of EU trademarks applied for before the IP Translator ruling (either registered or still pending before June 22, 2012) to declare before September 24, 2016, that their trademark was meant to cover also goods or services not covered by the literal meaning of the general indications, appears, in hindsight, superfluous. And what about forbidden terms, i.e., those terms identified in the Convergence Programme that do not meet the requirements of “clarity and precision”? The CJEU in Cactus does not make an express reference to forbidden terms, but specifically, to retail services in Class 35. It held that EUTMs that pre-dated the Praktiker Bau judgment of July 7, 2005 (C-418/02), and covered the full class headings in Class 35, automatically extended to “retail services for any goods.”

The CJEU’s decision gives owners of EUTMs pre-dating IP Translator and Praktiker Bau a potentially wider basis for successfully opposing applications that were filed later. The Cactus decision is very relevant and practitioners should be aware of its consequences.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position. 
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