LAMBRETTA – revocation for non-use
24 April 2017
The CJEU has recently confirmed that the approach to the interpretation of class headings used in trade marks registered before the seminal IP Translator case of 2012 may still be relevant in certain circumstances.
Scooters India filed for the mark LAMBRETTA as an EUTM in February 2000 in class 12 (amongst others). The mark was registered in August 2002. In November 2007 Brandconcern applied to revoke the mark for non-use in relation to goods in class 12, and in 2010 the mark was partially revoked accordingly. An appeal was filed.
The Board of Appeal rejected the appeal, focusing its attention on the terms covered in class 12 (ie, "vehicles; apparatus for locomotion by land, air or water") in their literal sense. Since evidence submitted related only to spare parts for scooters and not the literal terms covered by the mark, the appeal was refused.
Scooters India filed a further appeal to the General Court in 2012. The General Court held that the class 12 specification, as drafted, should be interpreted as intending to protect the mark for all goods in the alphabetical list of class 12. Even if "spare parts for scooters" did not actually appear in the alphabetical list, the Board of Appeal was required to examine whether there had been genuine use of the many parts and fittings that were listed. Since the Board of Appeal had not carried out that examination, its decision was annulled, and it should consider whether genuine use had been made of the mark in relation to spare parts in accordance with relevant law (eg, case law such as Ansul, C-40/01).
Brandconcern appealed to the CJEU, but the court held that the judgment in IP Translator (C-307/10), requiring Applicants who cite a Class heading in its entirety (as Scooters India had done) to specify whether the mark is intended to cover all goods in the alphabetical list, did not apply to the LAMBRETTA mark, which had bee registered before the IP Translator decision had issued. As Communication No. 2/12 (adopted by the President of the EUIPO on 20 June 2012) had pointed out, marks registered before that Communication which cited class headings are deemed to have been intended to cover all goods in the alphabetical list.
The effects of the 2012 IP Translator decision are likely to be felt less and less after the deadline for filing declarations under Article 28 ('clarifying' the scope of goods/services covered by marks where class headings were used and filed prior to the decision) passed in September 2016. Nevertheless, this case shows that the case can still rear its head and have a substantive effect in disputes that commenced before 2012.