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"IP Translator" application in General Court - Lambretta (Part 1)
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 The BoA dismissed the appeal except for in so far as the mark LAMBRETTA had been revoked in respect of ‘soaps’ in Class 3.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 subjective conditions)”
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.Posted by: Laetitia Lagarde @ 16.55
Tags: lambretta, recovation for non-use, Ip translator,
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