May 2024

Intellectual Property Insights

As part of the WTR series EUROPEAN UNION | Legal updates: case law analysis and intelligence, Andreea Bende, Partner authored a piece titled “Partial use of trademark in revocation proceedings once again under General Court’s scrutiny“.

The thesis:

• The EUIPO found that the mark ROYAL MILK could be maintained only for the goods for which use had been proven (ie,“milk powder for food purposes”)
• The court confirmed that the category of “milk and milk products” was capable of being divided into further, specific sub-categories
• The larger category “milk and milk products” and the sub-category “milk powder” meet different consumer needs

Principle of ‘partial use’

Trademark law stands as a guardian of brand identity, protecting businesses from infringement and ensuring consumers can confidently associate products or services with a specific source. However, the principle of partial trademark use introduces an intriguing aspect to this legal landscape, particularly in the context of non-use revocation proceedings.

Traditionally, trademark law has demanded a stringent requirement of actual use to maintain the validity of a registered mark. However, as businesses evolve, the question of whether a trademark must be used across all listed goods or services has become a subject of legal scrutiny in many conflicts that reached the EU courts. Partial use refers to a scenario where a registered mark is effectively used only for a subset of the goods or services covered by its registration.

When it comes to EU trademarks, a lack of genuine use across all listed categories could render a trademark vulnerable to revocation; however, according to Article 58(2) of Regulation 2017/1001, if the EU trademark was used only for some of the goods and services for which it was protected, the revocation will be limited only to the goods and services not used.

The present case

A recent decision rendered by the EU General Court in Case no. T-603/22 on January 24, 2024, once again reveals that for preserving a more expansive category of goods and services protected under the mark, trademark owners must be able to demonstrate that their mark was used at least for a subordinate class of the goods pertaining to the same category. However, the imperative lies in recognizing the significance of aligning the goods for which the mark is actually used with a larger category, which is a condition for ensuring that the registration is maintained for the expanded category of goods.

In said decision, the Court confirms as correct the analysis performed by the EUIPO in the contested decision that had been rendered by the Board of Appeal, following the same approach taken by the EUIPO Cancellation Division when analyzing the non-use revocation claim filed by the Alpen Food Group BV against the registration of the EU trademark no. 010321735 for goods in class 29 – ‘Meat, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; ‘fats’.

According to the contested decision, in response to the revocation claim, the trademark owner – Agus sp.z.o.o. – was able to demonstrate that it had genuinely used the trademark only for ‘milk powder for food purposes’ and, as a consequence, both the Cancellation Division and the EUIPO Board of Appeal had decided that the EU trademark can be maintained only for said goods for which use was proven.

On appeal, Agus argued that Board of Appeal’s decision should be annulled, as it reflects a misinterpretation of the principle of the concept of ‘independent subcategory of goods’, arguing that the EUIPO failed to recognize that the contested mark has been used for the larger category of goods ‘milk and milk products with the exception of ice creams and milk desserts’.

In supporting its claim, the applicant stated that milk is a product that takes various forms, including that of milk powder. He further argued that the Board of Appeal erred when it considered that ‘milk powder’ is a distinct / independent subcategory of goods, by misapplying the criterion of the purpose and intended use of the goods at issue.

General Court decision

In line with the analysis performed by the Board of Appeal, the Court confirmed that:

• the category of ‘milk and milk products with the exception of ice creams and milk desserts’ is not sufficiently narrow and therefore capable of being divided into further, specific, subcategories
• ‘milk powder’ can be regarded as a subcategory of its own, as it is capable of including various types of milk powder (of various origin) which meet similar consumer needs
• despite the fact that, in principle, the nature of the goods at issue and their characteristics are not relevant with regard to the definition of subcategories of goods, the Board took into account the public’s perception when it performed its analysis and concluded, correctly, that the analyzed goods – i.e. the larger category ‘milk and milk products’ and the subcategory ‘milk powder’ meet different consumer needs.

Comment

The freedom of a trademark owner to trade under its mark for a specific subset of protected goods remains intact when the mark’s usage is proven for that particular segment within the same category. Striking a balance is crucial, as this approach avoids undue constraints on the owner’s ability to uphold the validity of the registration across the entire class or group of goods/services. However, this recent case law emphasizes the essential need for a thorough examination of the demonstrated use, taking into consideration both the actual goods/services and the perspective of consumers. This scrutiny aims to ensure that the demonstrated use does not pertain solely to a narrow and independent subcategory of goods, in which case the trademark’s validity for the broader class of goods/services would be jeopardized.

This article first appeared in WTR Daily, part of World Trademark Review. For further information, please go to www.worldtrademarkreview.com

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