Look sharp! Thorny issues in Cactus decision
22 January 2018
In 2009, Mrs Del Rio Rodríguez applied to register the mark shown below for horticultural goods and services in classes 31, 39 and 44 , including: ‘Seeds, natural plants and flowers’; the distribution of such goods; and gardening services.
Cactus SA (Cactus) opposed, claiming a likelihood of confusion with its earlier EUTMs:
- word mark CACTUS
- composite mark
Cactus’ registrations included “natural plants and flowers, grains; fresh fruit and vegetables” in class 31, as well as the class heading of class 35.
The earlier marks were put to proof of use. The Opposition Division found Cactus had genuinely used the word mark for the class 31 goods and “retailing of natural plants and flowers, grains; fresh fruits and vegetables” services in class 35. It followed there existed a likelihood of confusion between the marks.
Board of Appeal decision
Mrs Del Rio Rodríguez’s appeal to the Board of Appeal was upheld and the opposition was dismissed: the Opposition Division erred by finding genuine use of the registrations in respect of “retailing of natural plants and flowers, grains; fresh fruits and vegetables” services in class 35, primarily on the basis that those services were not covered by Cactus’ registrations (the class heading does not refer to “retailing”). The Board of Appeal found Cactus had failed to evidence genuine use of its marks for any goods/services of the registrations.
Cactus appealed arguing that the Board of Appeal had erred by:
- examining of its own motion whether “retailing of natural plants and flowers, grains; fresh fruits and vegetables” in class 35 were covered by Cactus’ registrations – it was not disputed by the parties. Cactus argued its registrations must be regarded as covering all class 35 services, including “retailing”.
- considering that the above services in Class 35 were not covered by Cactus’ registrations. Cactus claimed that there had been genuine use for those services.
The GC annulled the Board of Appeal decision and held that “retailing of natural plants and flowers, grains; fresh fruits and vegetables” were covered by Cactus’ registrations, and allowed the opposition based on the class 31 goods.
The EUIPO appealed, arguing that General Court had misinterpreted the decisions in IP Translator (which essentially noted that general indications of a particular class heading could only cover goods/services in the alphabetical list of that class) and Praktiker Bau (that “retail services” must relate to specific goods/types of goods). The EUIPO argued that both decisions should apply retroactively, even though the earlier marks were registered before the delivery of those decisions.
The CJEU disagreed and referenced the Brandconcern v EUIPO judgment (C-577/14 P). The IP Translator judgment provided clarifications for new EUTM applications and did not concern marks registered before the decision was delivered. The General Court was therefore right to find that IP Translator did not apply. Further, whilst transitional provisions gave proprietors of EUTMs filed before 22 June 2012 and registered in connection with entire class headings the opportunity to declare whether their intention was to cover the literal meaning of the heading or all terms included in the alphabetical list (before September 2016), that provision was not applicable at the time the General Court took its decision.
Further, the CJEU held that the Praktiker Bau judgment related to applications for registration and did not affect trade marks registered before the delivery of that judgment. As such, Cactus was not required to show use of the marks for the retail of particular goods/types of goods.
The EUIPO also argued that Cactus’ use of part of the composite mark (stylised cactus) altered the distinctive character of the mark as registered. The EUIPO argued that the General Court had erred by:
- finding the figurative element to be “essentially equivalent” to the mark as registered;
- failing to conduct an overall assessment of signs, including their visual and phonetic differences;
- failing to consider that consumers would not perceive the figurative element as a stylised cactus without prior knowledge of the mark as registered; and
- assessing the distinctive character of the composite mark from the perception of customers in Luxembourg.
The CJEU dismissed arguments (3) and (4) as an appeal to the court lies on points of law only - such arguments concerned factual assessments. On (1) and (2), the General Court had conducted an appropriate examination as it had made visual and conceptual comparisons (whilst finding the stylised cactus and word CACTUS conveyed the same semantic content).
The decisions of IP Translator and Praktiker Bau do not have retroactive effect for registered EUTMs predating those judgments.
Case details at a glance
Jurisdiction: European Union
Decision level: Court of Justice of European Union
Parties: EUIPO v Cactus SA
Date: 11 October 2017
Full decision (InfoCuria): http://curia.europa.eu