The matter at hand

ACTC applied for the EU trade mark registration of the word mark “TIGHA” for goods in Class 25 of the Nice Agreement. Taiga opposed the registration, citing Article 8(1)(b) of Trade Mark Regulation 207/200, based on its earlier EU word mark “TAIGA” for similar goods in Class 25 of the Nice Agreement. The Opposition Division initially rejected the opposition in its entirely. After the notice of appeal of Taiga the Board of Appeal of EUIPO partially annulled that decision, leading to the rejection of the registration concerning the goods falling within Class 25 of the Nice Agreement.

Subsequently, ACTC challenged this decision and brought an action for annulment of the contested decision, alleging infringement of Article 42(2) and 8(1)(b) of the Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark. The General Court dismissed the action entirely, prompting the current appeal before the ECJ.

The judgment of the ECJ

The core issue at hand revolves around the interpretation of Article 42(2) of the Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, concerning the requirement for an earlier trade mark to demonstrate genuine use in the European Union within five years preceding the date of publication against which opposition has been filed.

The ECJ underscores that: “The last sentence of Article 42(2) of that regulation provides that, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered, it is, for the purposes of the examination of the opposition, to be deemed to be registered in respect only of that part of the goods or services.” (paragraph 38). According to the ECJ with regard to the categories of goods or services for which the earlier mark was registered a key element is the balance between “the maintenance and preservation of the exclusive rights conferred on the proprietor of the earlier mark” and “the limitation of those rights in order to prevent a trade mark which has been used in relation to part of the goods or services being afforded extensive protection merely because it has been registered for a wide range of goods or service”(paragraph 39).

Furthermore, the ECJ emphasizes that a subcategory of goods covered by an application for registration must be identified having recourse to a criterion enabling that subcategory to be delimited in a sufficiently precise manner (OHIM v Kessel medintim C-31/14 P). The ECJ highlights the necessity of identifying a subcategory with precise criteria. In cases where a consumer associates all goods or services in a precisely defined category with the earlier mark, proof of genuine use for part of that category suffices. Conversely, for goods or services in a broad category with multiple subcategories, the proprietor must provide evidence of genuine use for each autonomous subcategory. 

The ECJ states that with regard to the relevant criteria to apply for the purposes of identifying a coherent subcategory of goods or services capable of being viewed independently, that the criterion of the purpose and intended use of the goods or services at issue is an essential criterion for defining an independent subcategory of goods. In this matter the ECJ concludes that: “whether the articles referred to in the proof of use produced by Taiga constituted an independent subcategory in relation to the goods in Class 25 of the Nice Agreement, that is to say, in relation to the more general category for which the earlier trade mark was registered. In addition, the General Court correctly linked those articles to that more general category, before concluding, in paragraph 34 of the judgment under appeal, that those articles could not be regarded as substantially different.” (paragraph 47).

Lastly, the ECJ emphasizes that the purpose and intended use criterion should not offer an abstract or artificial definition of independent subcategories; rather, it must be consistently and specifically applied (paragraph 50).