Trade Mark LAMBRETTA

Marchio Lambretta decaduto per non uso

Trade Mark LAMBRETTA

Court of Justice: Orders, Judgements and Preliminary Rulings Case C-577/14P; Brandconcern BV v EUIPO and Scooters India Ltd; Judgment of 16 February 2017.

RESULT: Action dismissed

KEYWORDS: Proof of use, Extent of use

FACTS: The intervener was the proprietor of EU trade mark LAMBRETTA, registered by EUIPO on 6 August 2002 for, inter alia, ‘vehicles; apparatus for locomotion by land, air or water’ in Class 12.

The applicant requested the revocation of the trade mark for lack of genuine use pursuant to Article 51(1)(a) and (2) EUTMR.

The Cancellation Division (CD) partially upheld the application and revoked the trade mark LAMBRETTA in respect of the goods in Class 12.

The Board of Appeal (BoA) dismissed the EUTM proprietor’s appeal, applying the so called ‘literal approach’ to Class headings.

Since the evidence of use submitted by Scooters India was limited to the sale of spare parts (and not to vehicles or apparatus for locomotion), the BoA found that ‘it cannot be inferred from the sale of spare parts that [Scooters India] has also manufactured and sold … any vehicle’.

The EUTM proprietor filed an action before the General Court (GC) alleging infringement of Article 51(2) EUTMR.

The GC upheld the appeal and found that, even if spare parts for scooters did not actually appear in the alphabetical list of goods in Class 12, the BoA had to examine whether or not there had been genuine use of that mark in respect of the many fittings and parts listed therein.

The revocation applicant filed an action before the Court of Justice of the European Union (CJ) seeking the annulment of the GC judgment on the basis that there was no temporary limitation of the effects of the IP Translator judgment (IPT).

The CJ dismissed the appeal.

EUTM LAMBRETTA SUBSTANCE: The CJ referred to paragraph 61 of IPT judgment, where it was established that if the applicant for a trade mark uses the heading of a particular class of the Nice Agreement to identify the goods and services covered by the mark applied for, it must be specify whether the application for registration is intended to cover all the goods or services included in the alphabetical list or only some of them (para. 28).

In this regard, the CJ upheld the Office submission that IPT did not concern the proprietors of registered trade marks, but solely applicants for trade marks (para. 29).

Therefore, the rule set out in paragraph 61 of IPT is not applicable to the registration of the trade mark LAMBRETTA, which took place before the delivery of IP Translator judgement (para. 31).

Consequently, the CJ considered that the GC was not wrong in finding that the words ‘vehicles; apparatus for locomotion by land, air or water’ in the trade mark application filed on 7 February 2000 must be interpreted as seeking to protect the mark LAMBRETTA in respect of all the goods in the alphabetical list in Class 12 (para. 32).

The CJ also upheld the Office’s practice regarding Class Headings, namely Communications No 4/03 and 2(12) (paras. 31 and 32).

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