Extent of protection of CTMs prior to ECJ’s „IP Translator“-decision
Does a CTM registered before 21 June 2012 for all class headings protect only those class headings in the literal meaning or does it protect all goods/services in the alphabetical list of this class? The General Court (GC) had to decide on 30 September 2014 in case T-51/12 on a request for revocation for the trademark “LAMBRETTA” based on non-use in relation to the goods “vehicles; apparatus for locomotion by land, air or water”. The CTM proprietor had, as far it is relevant here, only submitted proof of use in relation to spare parts for scooters before OHIM. OHIM had disregarded this evidence as it would not prove use for “vehicles; apparatus for locomotion by land, air or water” in its literal meaning.
According to the ECJ’s decision of 19 June 2012 on case C-307/10 („IP Translator“) all goods and services for which trademark protection is claimed have to be identified with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trademark. An applicant using all class headings of a class, should indicate whether protection is requested for all goods/services in the alphabetical list of that class or only some of those goods/services.
Following the IP Translator-decision, OHIM had issued Communication no. 2/12 of the President explaining that it would – for all marks registered before 21 June 2012 – take the view that the use of all class headings of a particular class reflected the applicant’s intention to cover, by his demand, all goods and services included in the alphabetical list relating to that class. This approach was justified by reference to the Communication no. 4/03 of the President of OHIM where it was also stated that the use of all the general indications listed in the class heading of a particular class would also constitute a claim to all the goods or services falling into that class.
Also, the case at issue where the mark was even registered before Communication no. 4/03 of the President of OHIM could not be treated differently, as Communication no. 4/03 only clarified the already existing practice and was also in line with the GC’s jurisdiction at that time.
According to the GC in favor of the CTM proprietor therefore the complete alphabetical list of goods in Class 12 had to be taken into account. As this list also contained spare parts, the Board of Appeal should have examined the evidence which the CTM proprietor had submitted in relation to spare parts for scooters. For this reason, the GC annulled the decision of the Board of Appeal.
Conclusion: Following the GC’s decision – which has not yet become final – the proprietors of CTMs registered and also filed before 21 June 2014 should be safe that their CTMs which cover the complete class headings of one class also have protection for all the goods/services which were in the alphabetical list at the time of the filing. It remains to be seen whether the decision becomes final or if OHIM takes the matter to the ECJ.