In case T-51/12 Scooters India v OHMI , Brandconcern BV, filed an application for partial revocation of the mark
LAMBRETTA on the basis of Article 50(1)(a) and 50(2) of CTMR in respect of
the goods in Classes 3, 12 and 18 claiming that there had been no genuine use
of that mark within a continuous period of five years.
The Cancellation Division partially revoked the mark
LAMBRETTA, with effect from 19 November 2007, in respect of the goods in
Classes 3, 12 and 18, with the exception of ‘perfumery, essential oils,
cosmetics, hair lotions’ in Class 3. The BoA dismissed the appeal except for in
so far as the mark LAMBRETTA had been revoked in respect of ‘soaps’ in Class 3.
The applicant appealed claiming that, at the time it filed its application for registration of the mark LAMBRETTA, on
7 February 2000, it was OHIM’s practice to understand a reference to a
complete class heading in an application for registration as covering all the
goods listed in that class and not only the goods corresponding to the literal
meaning of that heading. The applicant maintains that it had to be able to rely
on its application being interpreted in the same way, notwithstanding the
judgment of the Court of Justice in Case C‑307/10 Chartered Institute of Patent
Attorneys , and the
altered practice of OHIM as a result. Further, the Board of Appeal found that genuine use of
the mark LAMBRETTA had been proven in respect of spare parts for scooters (part
of Class 12).
The BoA took to apply the IP translator judgment,
meaning whether the indications in the specification of the goods meet the
requirements of clarity and precision, and as the competent authority, was
entitled to interpret the application for registration as covering only the
heading of Class 12 taken in its literal meaning.
The GC confirmed that since that judgment was
delivered after the facts at issue in the present case, the question that
arises is that of its bearing on the present case.
OHIM took the view that, as regards Community trade
marks registered before 21 June 2012, the use of all the general
indications listed in the class heading of a particular class reflected the
applicant’s intention to cover, by his demand, all the goods or services
included in the alphabetical list relating to that class. In those
circumstances, the approach set out by the President of OHIM in Communication
No 2/12 applies the principles of the protection of legitimate
expectations and of legal certainty. The court disagreed finding that “ the latter protects the interest of
the public — and not only that of trade mark proprietors (with
Accordingly, the words ‘vehicles;
apparatus for locomotion by land, air or water’ in the Community trade mark application that the applicant filed with OHIM on 7 February 2000 must be
interpreted as intended to protect the mark LAMBRETTA in respect of all the
goods in the alphabetical list in Class 12. The applicant moreover confirms, in
its written pleadings, that that was indeed its intention when it filed its
application for registration.
Even though ‘spare parts for scooters’
do not actually appear in the alphabetical list of goods in Class 12, it must
be stated that, as the applicant submits, that list contains many fittings and
parts for vehicles, such as, inter alia, ‘vehicle wheels’ (No 120053),
‘pneumatic tires [tyres] / tires, solid, for vehicle wheels / tyres, solid, for
vehicle wheels’ (No 120158) and crankcases for land vehicle components, other
than for engines (No 120058). It must be pointed out that that finding does not
prejudge the question whether the spare parts that the applicant claims to have
marketed actually fall within Class 12 or, as Brandconcern claims, in Classes
6 and 7.
Consequently, at the very least
some spare parts for scooters were included in the list of goods covered by the
mark LAMBRETTA, with the result that the Board of Appeal was required to
examine the genuine use of that mark in relation to those spare parts.
Given that the Board of Appeal did not
carry out such an examination, the first complaint put forward by the applicant
must be upheld and the contested decision must be annulled on the basis of
infringement of Article 51(2) of Regulation No 207/2009.