Case C‑501/15 P

European Union Intellectual Property Office (EUIPO)

v

Cactus SA

(Appeal — EU trade mark — Regulation (EC) No 207/2009 — Figurative mark containing the word elements ‘CACTUS OF PEACE CACTUS DE LA PAZ’ — Opposition by the proprietor of word and figurative EU trade marks containing the word element ‘Cactus’ — Nice Classification — Article 28 — Point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 — Genuine use of the mark in an abbreviated form)

Summary — Judgment of the Court (Fourth Chamber), 11 October 2017

1. Approximation of laws—Trade marks—Directive 2008/95—Identification of the goods or services concerned by the trade mark—Use of the general indications in the headings of the classes of the Nice classification—Extent of the resulting protection—Obligation on the applicant to specify the products or services covered by his application

   Directive 2001/37 of the European Parliament and of the Council)

2. Approximation of laws—Trade marks—Directive 2008/95—Service marks—Concept of ‘services’—Retail of goods—Included—Conditions for registration

   (Directive 2008/95 of the European Parliament and of the Council)

3. Appeal—Grounds—Incorrect assessment of the facts and evidence—Inadmissibility—Review by the Court of the assessment of the facts and evidence—Possible only where the clear sense of the evidence has been distorted

   (Art. 256(1), second subpara. TFEU; Statute of the Court of Justice, Art. 58, first para.)

4. EU trade mark—Observations of third parties and opposition—Examination of the opposition—Proof of use of the earlier mark—Genuine use—Use of the mark in a form differing by elements not altering the distinctive character of the mark—Purpose and material scope of Article 15(1)(a) of Regulation No 207/2009—Examination of alteration of distinctive character

   (Council Regulation No 207/2009, Art. 15(1), second subpara., point (a))

1.  As regards, in the first place, the scope of the judgment in IP Translator, C‑307/10, it should be recalled that, in paragraph 61 of that judgment, the Court held that, in order to comply with the requirements of clarity and precision, an applicant for a trade mark who uses all of the general indications of a particular class heading of the Nice Classification to identify the goods or services for which protection of the trade mark is sought must specify whether his 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 concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.

   The Court indicated, in paragraphs 29 and 30 of the judgment of 16 February 2017, Brandconcern C‑577/14 P, that the IP Translator judgment provided clarifications only on the requirements relating to new EU trade mark registration applications, and thus does not concern trade marks that were already registered at the date of that latter judgment’s delivery. The Court thus inferred, in paragraph 31 of the judgment in Brandconcern, that it therefore could not be considered that the Court, by the IP Translator judgment, had sought to question the validity of the approach set out in Communication No 4/03 as regards trade marks registered before the delivery of that latter judgment

   Communication No 2/12 of the President of the European Union Intellectual Property Office cannot call into question that case-law and thus lead to the scope of protection of trade marks registered before the delivery of the IP Translator judgment for goods or services designated by the general indications of the class headings of the Nice Agreement being limited solely to the goods or services mentioned in the alphabetical list of that class and to that protection being denied, in accordance with Communication No 4/03, to all the goods and services within that class.

   The scope of the protection afforded by trade marks that have been registered may not be altered on the basis of a non-binding communication which has no function other than to provide clarification for applicants as to the practices of EUIPO

   (see paras 37-40)

2.  As regards the scope of the judgment in Praktiker Bau, C‑418/02, it is important to recall that, in paragraphs 39 and 50 of that judgment, the Court held that, although retail trade in goods constitutes a service in Class 35 of the Nice Agreement, the applicant must nevertheless be required to specify, for the purposes of registering a trade mark, the goods or the types of goods to which the retail trade relates.

   Following the approach adopted in the IP Translator judgment, C‑307/10, the line of authority derived from the Praktiker Bau judgment concerns only applications for registration as EU trade marks and does not concern the scope of the protection of trade marks registered at the date of that judgment’s delivery.

   Such an approach is moreover consistent with the principles of legal certainty and protection of legitimate expectations.

   (see paras 44-47)

3.  See the text of the decision.

   (see para. 60)

4.  The Court has already held that it follows directly from the wording of point (a) of the second subparagraph of Article 15(1) of that regulation that the use of the trade mark in a form which differs from the form in which it was registered is regarded as use for the purposes of the first subparagraph of that article provided that the distinctive character of the mark in the form in which it was registered is not altered.

   It should be recalled that, in so far as it does not impose strict conformity between the form in which the trade mark is used and the form in which the mark was registered, the purpose of point (a) of the second subparagraph of Article 15(1) of that regulation is to allow its proprietor, on the occasion of its commercial exploitation, 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.

   It follows that the condition of ‘genuine use’ in the sense of point (a) of the second subparagraph of Article 15(1) of the same regulation 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.

   (see paras 65-67)