Declarations made following IP translator do not add new goods or services to the scope of protection

C-653/17 P


Trade marks: Scope of protection

15 May 2019

The matter at hand

In 2009, the German company VM Vermögens-Management (‘VM’) applied for the registration of the word sign ‘Vermögensmanufaktur’ as an EU trade mark for services in classes 35 and 36 using the Nice class headings ‘advertising, business management, asset management and financial consultancy’. The mark was registered in May 2011.

In 2012, DAT Vermögensmanagement applied for a declaration of invalidity of this mark for all of the services for which it was registered on the basis of Article 7(1)(b) (lack of distinctive character) and 7(1)(c) (descriptiveness) of Trade mark Regulation 207/2009.

After the Cancellation Division rejected the application for invalidity, the Fifth Board of Appeal, however, held that the contested mark was descriptive and devoid of distinctive character and declared the trade mark invalid for the services in classes 35 and 36.

VM subsequently appealed to the General Court and, after that appeal was brought, filed a declaration (referred to as ‘the 2016 declaration’) under Article 28(8) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, which allowed for a transitional period following IP Translator (C‑307/10), in which VM specified the services which it had intended to cover at the time of the application for registration of the contested mark. VM argued that the registration of the contested mark, and thus the contested decision, related only to the general indications of the headings of classes 35 and 36 of the Nice Agreement and not to the services added by virtue of the 2016 declaration. The General Court dismissed this argument, after which VM appealed to the ECJ.

The judgment of the ECJ

The ECJ rules that in accordance with the approach set out in the first paragraph of Point IV of Communication No 4/03 and Point V of Communication No 2/12, the use of all the general indications listed in the class heading of a particular class constitutes a claim to all the goods or services falling within this particular class. The ECJ furthermore notes that Article 28(8) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, as amended by Trade Mark Regulation No 2015/2424, provides that trade marks for which no declaration is filed are to be deemed to extend, from 24 September 2016, only to goods or services clearly covered by the literal meaning of the indications included in the heading of the relevant class. The ECJ holds that this means that “at the time of its registration, the protection enjoyed by the contested mark already included the services covered by the 2016 declaration” (paragraph 49) and that “the 2016 declaration was not intended to add new services to the protection enjoyed by the contested mark” (paragraph 50). Therefore, although the contested decision was adopted before the 2016 declaration, it related to all services in classes 35 and 36, including those covered by the 2016 declaration.

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