The matter at hand

This matter concerns a request for revocation for lack of genuine use on the basis of Article 51(1)(a) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark of a trade mark registration for the word mark CYSTUS registered for ‘food supplements not for medical purposes’. Although the General Court, as well as the Cancellation Division and the First Board of Appeal before it, seemed to accept that the word mark CYSTUS was not devoid of distinctive character, all ruled that the trade mark owner, Mr Pandalis, had used the mark merely as a description to indicate that the relevant food supplements contained extracts from the plant ‘Cistys Incanus L.’. In this respect, the use of the symbol ® in conjunction with the word element ‘cystus’, and the spelling of this word element with a ‘y’ instead of an ‘i’, was held to be insufficient to conclude that it had been used as an indication of origin.

In the proceedings before the ECJ, Mr Pandalis, after first challenging the classification by the General Court of the relevant goods as ‘food supplements for medical purposes’, essentially argued that the assessment made by the General Court was contradictory, since, on the one hand, it held that the word mark had weak distinctive character, while on the other hand holding that the relevant public would perceive it as a descriptive indication. In addition, he argued that in as far as the General Court did hold that the word element ‘cystus’ was descriptive, the General Court thereby ruled on the existence of an absolute ground for refusal and infringed his right to a fair hearing.

The Judgment of the ECJ

The ECJ rejects the first ground of appeal directed against the classification by the General Court of the food supplements marketed by Mr Pandalis as food supplements for medical purposes, considering that this merely challenges the factual assessments made by the General Court. The ECJ also finds no distortion of the facts, nor an infringement of the obligation to state reasons. In this regard, the ECJ recalls that it is settled case law that the obligation to state reasons “does not require the General Court to provide an account which follows exhaustively and one by one all the arguments put forward by the parties to the case, and that the General Court’s reasoning may therefore be implicit, on condition that it enables the persons concerned to know why it has not upheld their arguments and provides the Court of Justice with sufficient material for it to exercise its power of review” (paragraph 67).

With regard to the second ground of appeal, the ECJ rules that “there is ‘genuine use’ of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered” (paragraph 83) and that this condition is “not fulfilled where the mark affixed to an item does not contribute to creating an outlet for that item or to distinguishing, in the interest of the consumer, the item from the goods of other undertakings” (paragraph 85). The ECJ holds the General Court correctly applied this principle. Although the General Court recognised that the element ‘cystus’ had some, albeit weak, distinctive character, this does not necessarily mean that Mr Pandalis, in fact, used it as an indication of origin “since a trade mark is not always used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it has been registered” (paragraph 91). The General Court was therefore right to conclude that there was no genuine use on the basis of its factual assessment that Mr Pandalis had “used the term ‘cystus’ as a description of the main ingredient of the goods concerned” (paragraph 92).

The ECJ also rejects the argument that Mr Pandalis was denied a fair hearing because the Board of Appeal had ruled on an absolute ground of refusal by considering that the descriptive nature of the word element ‘cystus’ was not affected by the switching of ‘i’ and ‘y’. The ECJ rules that although “admittedly, those statements could lead to confusion” it is also apparent from the decision of the Board of Appeal that it considered the question of whether Mr Pandalis had used the term ‘cystus’ merely as a descriptive indication, and not of whether the term ’cystus’ was descriptive in general. As to the Board of Appeals’ finding that the addition of the symbol ‘®’ would probably be understood as communicating the fact that Mr Pandalis had acquired a trade mark right in a descriptive indication, the ECJ rules this did not amount to a finding that the term ‘cystus’ constitutes, generally, a descriptive indication, “but an interpretation of what the appellant communicated by the use of the symbol ‘®’” (paragraph 108).