The General Court has issued a judgment in Case T-358/21, Hotel Cipriani SpA v. European Union Intellectual Property Office – Altunis-Trading, Gestão e Serviços, Sociedade unipessoal, Lda, highlighting several relevant issues regarding the concept of genuine use of a specific subcategory of goods. In that judgment, the General Court provides guidelines on how to conduct a comprehensive assessment of all the evidence submitted to the European Union Intellectual Property Office, as well as the criteria to be followed in determining the existence of a distinct subcategory of goods or services, based on the evidence presented to that Office.
Preliminary Remarks
On November 21, 1997, Altunis-Trading, Gestão e Serviços, Sociedade Unipessoal, Lda filed an application for registration of a European Union trademark consisting of the figurative mark CIPRIANI. The application sought protection for goods in Classes 29 and 30. The registration for this application was granted on January 9, 2002, under number 000683250.
On January 24, 2019, Hotel Cipriani SpA filed a petition for revocation on the grounds of nonuse against European Union trademark No. 000683250, CIPRIANI (figurative), in connection with all the goods for which it was registered.
After the owner of the contested trademark submitted evidence of use, on June 16, 2020, the Cancellation Division issued a decision partially granting the request for revocation due to lack of use. Consequently, the registration of the trademark in question was maintained only in relation to “Edible oils” in Class 29 and “Rice; Cereal-based preparations, bread; Vinegar”in Class 30.
On July 31, 2020, Hotel Cipriani SpA filed an appeal against the decision issued by the Cancellation Division. In a decision dated April 27, 2021, the Board of Appeals dismissed the appeal.
Hotel Cipriani SpA appealed the decision issued by the Fourth Board of Appeal to the General Court, citing four grounds. The first of these related to the assessment of a specific piece of evidence that had been submitted to the European Union Intellectual Property Office by the appellant but had not been taken into account due to a computer error on the eSearch portal. The second, third, and fourth grounds referred to an alleged error in the assessment of the use of the contested trademark.
Court Decision
With regard to the appellant’s arguments concerning an alleged incorrect assessment of the evidence of use of the contested trademark as registered, the Court of Justice recalled that the use of a European Union trademark in a form that differs in elements that do not alter the distinctive character of the trademark in the form in which it was registered must also be considered genuine use for the purposes of Article 18(1) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of June 14, 2017, on the European Union trademark.
In this regard, the Court upheld the position taken by the Board of Appeals, finding that although certain products depicted in brochures and commercial catalogs included a version of the trademark with slight modifications, there was sufficient evidence of use to establish that those products had been marketed under the figurative trademark as registered.
The Court also found that the evidence of use submitted by the owner of the contested registration was sufficient to demonstrate that the sale of the goods in question had taken place during the relevant period, on a frequent basis, and in quantities that could not be considered merely symbolic.
With regard to the Class 30 goods at issue—for which actual use had to be demonstrated (“Rice; Cereal-based preparations, bread; Vinegar”), the appellant contended that the actual use of the trademark in question for various types of pasta, panettone, and focaccia was not sufficient to establish that it had been used in connection with the product category “Cereal-based preparations, bread,” insofar as the appellant considered that “Pasta” constituted a separate subcategory of “Cereal-based preparations.”
Those arguments were rejected by the Court, which, citing well-established case law of the Court of Justice of the European Union, held that what determined whether pasta, panettone, and focaccia constituted a subcategory of products that would be perceived as a distinct subcategory was whether they were essentially different and whether they had different purposes and intended uses.
After conducting an analysis based on those criteria, the Court held that it was impossible to consider pasta, panettone, and focaccia as separate subcategories within the class “Cereal-based preparations,” for which the contested trademark was registered, given that the purpose of all of them was to be consumed by people to satisfy their nutritional needs.
Comments
This judgment of the Court of Justice sheds light on how minor modifications made to a registered mark should be considered when the mark is used with differences that do not have the capacity to alter the distinctive character of the earlier mark as it was entered in the Register. In addition, it provides valuable guidance on the criteria to be followed in determining whether certain goods are capable of constituting an independent subcategory of goods or services. Specifically, for the purposes of determining whether an independent subcategory of goods or services exists, it must be capable of being perceived as such by consumers, with its purpose and intended use being the most relevant determining factors in this regard.
(This article was previously published in WTR in January 2023 under the title “General Court Considers How to Establish an Independent Subcategory of Goods.”)
Sara Navarro Joven, attorney at ELZABURU