Once the genie is out of the bottle…
Marcel Pemsel
Once the genie is out of the bottle…
Background
In 2010, Bouwbenodigdheden Hoogeveen BV (‘BHB’) obtained registration of the EU trade mark ‘BIENENBEISSER’ for the following goods:
- ‘Metal building materials, including air vents; ironmongery, small items of metal hardware, including air vents; goods of common metal not included in other classes, namely air vents’ in class 6.
- ‘Building materials (non-metallic), including air vents’ in class 19.
In 2021, a third party filed an application for revocation of said trade mark arguing non-use.
BHB
provided evidence of use for metal vents, which led the Cancellation
Division of the European Union Intellectual Property Office (‘EUIPO’) to
revoke the contested mark for all goods, except for metallic air vents
in class 6.
BHB’s appeal to the EUIPO’s Board of Appeal (‘BoA’)
was unsuccessful, so it filed an action with the General Court. The
action was limited to the revocation of non-metallic air vents in class
19.
The General Court's Decision
The General Court upheld BHB’s appeal and annulled the BoA’s decision.
It
was undisputed that BHB had used its trade mark for metallic air vents.
The question was whether this also constituted genuine use for
non-metallic air vents.
The judges recalled that, in order to
assess genuine use of a trade mark ‘in connection with the goods or
services in respect of which it is registered’ under Art. 58(1)(a) EUTMR,
it is necessary to determine (1) the scope of protection of the mark
and (2) the type of goods or services for which that mark has actually
been used on the market during the relevant period.
Scope of protection
The
Court found that the BoA correctly assessed the scope of protection of
the mark by relying on the Nice Classification. Even though the Nice
Classification serves a purely administrative purpose, it may be used to
determine the meaning of the relevant goods.
In particular,
where a term is so general that it may cover very different goods or
services, the Nice classes the applicant had chosen as well as the
descriptions and explanatory notes to the classes may be considered in
the interpretation of the term.
The judges confirmed that the
BoA was right to consider that the goods in class 6 only cover metallic
building materials while class 19 covers non-metallic building
materials.
Type of goods
As regards the type of
goods for which the trade mark was used, the Court found that BHB had
used the mark for goods that fall in the scope of protection of its
mark, namely metallic air vents (class 6).
On that basis, the
judges considered the concept of partial use. A consumer who wishes to
purchase a product in a category that has been defined particularly
precisely and narrowly, which cannot be significantly divided into
further subcategories, will associate all the goods belonging to that
category with the contested mark, so that that trade mark will fulfil
its essential function of guaranteeing the origin of those goods or
services. Therefore, if genuine use is established for some of the goods
in such a homogeneous category, genuine use has to be accepted for all
goods in that category.
This approach is supported by the
purpose of the concept of partial use, which is to avoid stripping the
trade mark owner of all protection for goods which, although not
strictly identical to those in respect of which genuine use has been
proven, are not in essence different from them and belong to a single
group, which cannot be divided other than in an arbitrary manner. Thus, a
trade mark owner does not need to establish use for all the commercial
variations of similar goods but merely for goods which are sufficiently
distinct to constitute coherent categories.
The determination of
a homogeneous group must be based on the purpose or intended use of the
goods because the consumer’s choice is based on these criteria. It is
decisive whether a consumer who wishes to purchase a product falling in
the category of goods covered by the trade mark in question will
associate all the goods belonging to that category with that mark. The
judges found that the classification of the goods does not play a role
in determining a coherent category.
BHB had submitted evidence
that metallic and non-metallic air vents have the same intended use,
purpose, appearance, distribution channels and are equally effective,
resistant and efficient, with the result that, when those goods were
purchased, their material play only a secondary role in the consumer’s
choice.
The Court held that the BoA did not provide sufficient
reason as to why these arguments were not sufficient to establish that
metallic and non-metallic air vents were not part of a homogeneous
group.
The judges also dismissed the EUIPO’s argument that BHB
‘chose’ to file for the registration of metallic and non-metallic air
vents in two different classes. BHB had to do this because the Nice
Classification requires protection in two different classes, depending
on the materials of the products.
Finally, the Court distinguished this case from the Mouldpro decision (IPKat here).
There, the contested mark was only registered for non-metallic goods
but used for metallic goods. Thus, the use fell not in the scope of
protection of the contested mark, i.e. the mark was used only for goods
for which it was not registered. The situation here is different because
the mark in question has been used for goods that fall within the scope
of protection.
Comment
The
decision broadens the application of the Aladin case law and the
principle of partial use significantly. As a consequence, owners of
trade marks that have been registered for goods or services in different
classes but which fall in the same homogeneous category need only to
establish genuine use for one of these goods in order to maintain or
enforce their trade mark for all terms in that category.
Furthermore,
there does not seem to be a reason why this case law should not also
apply to goods or services in the same class. E.g. if a trade mark is
registered for ‘backpacks’ and ‘sports bags’ in class 18, it is
sufficient to establish genuine use for either category of bags because
they belong to the coherent category of ‘bags’ (at least according to a decision of the German Patent Court).