The matter at hand
On 13 August 2009 Ms Isabel Del Rio Rodríguez filed an application for the registration of a figurative sign containing the word elements 'CACTUS OF PEACE' and 'CACTUS DE LA PAZ' as an EU trade mark. On 12 March 2010, the Cactus filed opposition to the registration of this mark, on the basis of the word mark CACTUS, registered on 18 October 2002, and a figurative mark containing the word element 'CACTUS' and a stylised cactus, registered on 6 April 2001.
The Opposition Division partly upheld the opposition, but that decision was overturned by the Second Board of Appeal, which took the view that Cactus had not adduced proof of genuine use of the earlier trade marks for the relevant services. The General Court disagreed with this finding and annulled the decision of the Board of Appeal on this point, after which EUIPO lodged an appeal to the ECJ.
The judgment of the ECJ
The first ground of appeal relates to the question of whether the judgments in IP Translator (C-307/10) and Praktiker Bau (C-418/02) have retroactive effect. Since that question had already been answered by the ECJ several months before in Brandconcern (C-577/14 P, also summarized in this book), the ECJ refers to that judgment and confirms that “it is apparent from examining the judgments in IP Translator — as interpreted by the Court in the Brandconcern judgment — and Praktiker Bau that the scope of the protection of a trade mark registered before the delivery of those judgments (…) cannot be affected by the authority derived from those judgments in so far as they concern only new applications for registration as EU trade marks” (paragraph 45).
As to Article 28(8) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark - which lays down a transitional provision allowing the proprietors of EU trade marks applied for before 22 June 2012 and registered in respect of the entire heading of a class of the Nice Classification to declare, before 24 September 2016, that their intention, at the date when the application was lodged, was to apply for protection for goods and services other than those covered by the literal meaning of that heading but included in the alphabetical list for that class - the ECJ merely holds that that provision was not applicable at the date of the decision at issue (paragraph 49).
The second ground of appeal concerns the General Court’s finding that the use of only the figurative element of the composite mark (the stylised cactus) constitutes genuine use. With reference to its judgment in Specsavers (C‑252/12), the ECJ recalls that it follows directly from the wording of Article 15(1) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, that the use of a trade mark in a form which differs from the form in which it was registered is regarded as genuine use, provided that the distinctive character of the mark in the form in which it was registered is not altered. The ECJ further recalls that the purpose of this provision “is to allow its proprietor to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned” (paragraph 66). “It follows that the condition of 'genuine use' is satisfied even where only the figurative element of a composite mark is used, as long as the distinctive character of that mark, as registered, is not altered” (paragraph 67). The ECJ rules that the General Court correctly applied this principle, by considering that the word element 'Cactus' and the figurative element representing a cactus had the same semantic content and therefore the same distinctive character, with the result that the absence of the word element in the abbreviated version of the earlier mark was not sufficiently important in the perception of the mark as a whole as to alter its distinctive character.