The matter at hand

Scooters India is the owner of EU trade mark LAMBRETTA for inter alia the following goods in class 12: ‘vehicles; apparatus for locomotion by land, air or water’ (paragraph 7). Brandconcern applied for partial revocation of this EU trade mark for these goods on grounds of non-use (paragraph 8). 

EUIPO partially revoked the EU trade mark LAMBRETTA in respect of the goods included in class 12, taking into account that from evidence relating to the sale of spare parts for scooters it cannot be inferred that vehicles have also been manufactured and sold (paragraph 9 and 10).

In the appeal brought before it, the General Court annulled this decision, inter alia considering that the reference to ‘vehicles; apparatus for locomotion by land, air or water’ had to be interpreted as intended to protect the EU trade mark LAMBRETTA in respect of all the goods in the alphabetical list in class 12. Furthermore, the General Court took the view that, even if ‘spare parts for scooters’ did not actually appear in the alphabetical list of goods in class 12, it had to be examined whether there had been genuine use of that mark in respect of the many fittings and parts listed therein (paragraph 12).  

Brandconcern appealed this decision before the ECJ, alleging that the General Court erred in law in so far as it limited the temporal effects of ECJ’s judgment IP Translator to trade marks applied for after the date of that judgment.

The judgment of the ECJ

The ECJ first of all repeats the rule laid down in paragraph 61 of its IP Translator judgment, namely that "in order to respect the requirements of clarity and precision imposed by Trade Mark Directive 2008/95Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, the applicant for a national trade mark who uses all of the general indications listed in the heading of a particular class of the Nice Agreement in order to identify the goods and services for which the protection of the trade mark is sought must specify whether the application for registration is intended to cover all the goods or services included in the alphabetical list of the particular class concerned or only some of those goods or services. If the application relates to only some of those goods or services, the applicant will be required to specify which of the goods or services in that class are intended to be covered.” (paragraph 28) 

The ECJ rules that "it is however important to bear in mind, in the first place,  that paragraph 61 of the [IP Translator judgment] does not concern the proprietors of trade marks which have already been registered, but solely applicants for trade marks." (paragraph 29) and, in the second place, is limited to "the requirements to which new applicants for national trade marks remain subject, who use the general indications of a class in order to identify the goods and services for which protection as a trade mark is sought.” (paragraph 30)

On this basis, the ECJ holds that it cannot be held that it sought to question the validity of the approach set out in Communication No 4/03 as regards trade marks registered before the delivery of the IP Translator judgment. "Consequently, by finding (…) that (…) it was appropriate for the words ‘vehicles; apparatus for locomotion by land, air or water’, corresponding to the goods mentioned under the heading of Class 12 of the Nice Agreement (...) to be interpreted as seeking to protect that trade mark for all the goods in the alphabetical list of Class 12, the General Court did not commit an error in law (...)” (paragraph 32)