The CJEU has confirmed that the IP Translator and Praktiker cases are not retroactively applicable; Case reference: EUIPO v Cactus, (C-501/15 P) of 11 October 2017
The case concerns an opposition against an EUTM application for a word/device mark 'cactus of peace' and 'cactus de la paz' based on earlier EUTM for word 'cactus' and a word/device EUTM for 'Cactus '. The EUIPO and its BoA upheld the opposition under Article 8(1) EUTM Regulation due to a likelihood of confusion. The GC saw things slightly differently and annulled the EUIPO's decisions as regards certain retail services in Class 35.
The case discusses two issues: (1) do the CJEU's IP Translator and Praktiker cases apply retroactively?; (2) whether use of the earlier trade mark's only figurative element - here: the stylised cactus - amounted to genuine use under Article 15(1) EUTM Regulation.
No retroactive application of IP Translator and Praktiker
The CJEU confirmed the GC decision and agreed with the GC that the CJEU's precedents in IP Translator (C-307/10) and Praktiker (C-418/02) do not apply retroactively.
With regard to IP Translator: inter alia citing Brandconcern (C-577/14 P), the CJEU held that it only applied to the specifications of EUTM applications but not trade marks that were already registered on the date of the judgment. Applying this to the case at hand, the court clarified that IP Translator did not apply to the marks used as the basis of the opposition.
With regard to Praktiker: the CJEU held that Praktiker only applied to EUTM applications covering "retail services" in Class 35 but did not affect the scope of the protection of trade marks that were already registered at the date of the judgement. Applying this to the case at hand, the court clarified that the GC had been correct when it decided that the opposition trade marks which designated the entire class headings in their specifications covered all goods and services included in that respective class, this also applied and included Class 35. Consequently, the CJEU found opponent did not have to further specify the type of products covered by the retail services covered by the opposition mark in Class 35.
Genuine use in a differing form
The second question decided was whether use of the earlier trade mark's only figurative element - the stylised cactus without the word element 'Cactus' - equated to a use "in a form that differs in elements which do not alter the distinctive character of that mark in the form in which it is registered" under Articles 15(1)(a) and 42(2) EUTM Regulation?
Initially, the CJEU confirmed that the determination of the criteria to be employed for the global assessment of equivalence of signs from the perspective of their distinctiveness is a question of law falls within the CJEU's jurisdiction.
Citing Specsavers (C-252/12), the CJEU reiterated that the condition of genuine use in the sense Article 15(1) (a) EUTM Regulation is satisfied even where only the figurative element of a composite mark is used, as long as the distinctive character of that mark, as registered, is not altered. Articles 15(1)(a) EUTM Regulation did not impose strict conformity between the form in which the trade mark is used and the form in which the mark was registered. Its purpose being "to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned."
This CJEU decision is a helpful and important clarification/reiteration of the 'historical' scope of application of the IP Translator case following on from Brandconcern. In Brandconcern the CJEU had, inter alia, referred to the transitional provision in Article 28(8) EUTM Regulation and held that IP Translator only applied to trade mark applications but was not applicable to the EUTMs that had already been registered before the decision had been handed down.