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Cactus of Peace: A Potted Plant or a Potty Decision?

Dr Stephen James writes again for Ward Trade Marks. Stephen is a past president of CITMA, and a leading practitioner with almost 40 years’ experience in UK and EU trade mark law.

This time he reviews CJEU and General Court judgements on the CACTUS OF PEACE case which raises a prickly issue in more ways than one.

In a recent judgment, the European Court of Justice (CJEU; Isabel Del Rio Rodriquez v Cactus SA; C-501/15P) confirmed two earlier findings of the General Court. One of these findings briefly added some certainty to the interpretation of older EUTM specifications of goods and services. The other finding added great uncertainty to the issue of genuine use (of a registered trade mark).

Isabel Del Rio Rodriguez applied to register the combination word mark shown below on 13 August 2009,

CACTUS OF PEACE

CACTUS DE LA PAZ

The EUTM application covered the following goods and services in Classes 31, 39 and 44:

Class 31: Seeds, natural plants and flowers;

Class 39: Storage, distribution and transport of manure, fertilisers, seeds, flowers, plants, trees, tools and gardening tools of all kinds;

Class 44: Gardening, plant nurseries, horticulture.

This application was opposed by the Luxembourg-based supermarket chain Cactus SA in March 2010. The retailer, who operates speciality shops selling flowers, plants and similar, relied on two earlier EUTM rights protecting the word mark CACTUS and the combination mark Cactus & Device. These earlier registrations covered a wide range of goods and services including “natural plants and flowers” in class 31 and “advertising, business management, business administration and office functions” in class 35. It will be noted that these class 35 services constitute the class heading (for class 35). The combination mark relied on by the opponent is shown below.

Cactus trade mark

As Cactus SA’s earlier rights were both granted well before the filing of Ms Del Rio Rodriguez’ EUTM application (October 2002 for the word mark and April 2001 for the combination mark), the EUTM applicant asked the opponent to provide evidence of genuine use of the earlier marks in the relevant five year period (14 December 2004 to 13 December 2009). This they did, although the evidence relied heavily on the use of the stylised cactus device, together with the Luxembourg word Blummen but without the word Cactus, as well as the use of their company name (Cactus SA) on relevant plant/flower invoices.

In spite of the limitations of this use evidence, the Opposition Division, in a decision given on 2 August 2011, found that Cactus SA had established use of their CACTUS word mark, in the EU during the relevant period, in respect of “natural plants and flowers; grains; fresh fruits and vegetables”. Further, given the EUIPO’s policy in 2011 that a claim to a class heading meant that an EUTM registration covered all goods or services in that class, the Opposition Division also found that the opponent’s earlier registrations protected retail services in class 35, even though such (retail) services were not specifically mentioned in Cactus SA’s earlier rights. More particularly, the Opposition Division found that Cactus SA’s evidence had established the use of their (CACTUS) word mark in relation to “retailing of natural plants and flowers, grains, fresh fruits and vegetables”.

Bearing the above in mind, the Opposition Division then found that the EUTM applicant’s mark was similar to the opponent’s earlier word mark CACTUS that Ms Del Rio Rodriguez class 31 goods and class 44 services were similar to the class 31 and 35 goods and services for which Cactus SA had shown use. By contrast, the EUTM applicant’s class 39 services were found to be dissimilar to the earlier “used” goods and services. On this basis, Ms Del Rio Rodriguez’ EUTM application was rejected in respect of the class 31 and 44 goods and services claimed and allowed to proceed in respect of the class 39 services deemed to be dissimilar.

On 28 September 2011, The EUTM applicant appealed against the partial rejection of her EUTM application. The Second Board of Appeal issued its decision on 19 October 2012. In the year between the filing of the appeal and the publication of the appeal decision, the European Court gave its ruling in the ill-fated (and controversial) IP translator case (C-307/10) which established that an EUTM applicant claiming a class heading must inform the EUIPO whether it was their intention either to cover all of the goods or services listed in that particular class or only some of those goods or services. This fundamental change was reflected in a new EUIPO practice on the class heading claims. Under that new practice, EUTM rights applied for prior to 22 June 2012 that had a claim to a class heading were said to protect all of the goods or services in the relevant (Nice) alphabetical list rather than, as previously, all of the goods and services in the relevant class. This change was reflected in the Second Board of Appeal’s reasoning and had an important effect on their decision.

According to the Second Board, the opponent’s case fell at the first hurdle for two reasons. First, their evidence was insufficient to demonstrate genuine use of their trade marks in relation to class 31 goods. This was because

i) it showed such goods being sold under trade marks other than those relied on; or

ii) it relied on the use of the stylised cactus device on its own (without the word mark CACTUS/Cactus); or

iii) it involved the use of a company name (CACTUS SA) rather than a trade mark.

As far as the opponent’s attempt to prove the genuine use of its marks in respect of the retail of plants and flowers (and similar in class 35) was concerned, this was given short shrift by the Board. In their view, such services were not covered by either of the earlier registrations relied on by the opponent. The (class 35) services therefore could not be relied on in the opposition.

It followed, in the view of the Board of Appeal, that Cactus SA’s case had no basis since the evidence was insufficient to prove the genuine use of the earlier marks. They therefore dismissed the opposition and allowed Ms Del Rio Rodriguez’ application to proceed in respect of all the goods and services claimed.

The Luxembourg based opponent appealed to the General Court (case T – 24/13) who, in a judgement dated 15 July 2015, restored the Opposition Division’s original decision in a highly controversial ruling.

The General Court (GC) began by considering the services that were included in the opponent’s two EUTM registrations. In other words, were “retailing of natural plants and flowers, grains, fresh fruits and vegetables” services covered by Cactus SA’s (class 35) class heading claim? The GC decided that such “retail services” were included, ruling that the IP Translator decision did not have any retrospective effect. That is, the “all services in class 35” coverage that Cactus SA thought their two EUTM registrations had when they filed their applications back in 2001 and 2002 remained in place in 2015 in spite of the IP Translator case and the EUIPO’s change of practice.

The GC then moved on to the opponent’s evidence of use. They ruled as follows:

i) the two elements of the opponent’s figurative mark (the word cactus and the stylised cactus device) convey the same semantic content. It followed that the use of the cactus device on its own (without the word cactus) would be equated by the relevant consumer to the use of the whole (word/device) combination mark. The Cactus SA’s use of just the stylised cactus device did not alter the distinctive character of the entire combination mark.

ii) where an earlier word mark (such as CACTUS) is also a company name (as in Cactus SA), it is possible for the company name to be used as a trade mark.

iii) the sale of plants, flowers and seeds that bear no trade mark, through a retail outlet that employs the marks CACTUS and/or Cactus and stylised cactus device, could constitute genuine use of those letter marks in respect of plants, flowers and seeds.

The GC then looked at the opponent’s evidence of use through the prism of those findings (on use). Having done so, they concluded that Cactus SA had established genuine use of both the word mark CACTUS and the combination mark (Cactus plus stylised cactus device) in the EU in respect of “natural flowers and plants, grains” in class 31.

It inevitably followed from this that the GC found a likelihood of confusion between the opponent’s earlier rights and the EUTM applications mark and goods/services in classes 31 and 44. The GC therefore rejected Ms del Rio Rodriguez’ application in relation to “Seeds, natural plants and flowers” in class 31 and “gardening, plant nurseries, and horticulture” in class 44. On the other hand, the opposed EUTM application was allowed to proceed in respect of “Storage, distribution and transport of the manure, fertilisers, seeds, flowers, plants, trees, tools and gardening goods of all kinds “in class 39.

Ms Del Rio Rodriguez appealed against the GC’s decision. However, the CJEU rejected her appeal. In a decision (C– 501/15P) dated 11 October 2017, the CJEU confirmed the GC’s findings, in particular that the

i) IP Translator case did not apply retrospectively to EUTM rights dated before the date of that decision. It followed that Cactus SA’s EUTM registrations did protect “retailing of natural plants and flowers, grains, fresh fruits and vegetables” in class 35.

ii) genuine use of combination mark, such as CACTUS plus a stylised cactus device could be established even where only the figurative element of the combination mark is used, as long as the distinctive character of that mark, as registered, is not altered.

In so doing, they maintained the rejection of Ms Del Rio Rodriguez’ EUTM application in respect of the class 31 and class 44 goods and services originally claimed.

Comment

Sometimes it appears that the European Court, both at the level of the GC and the CJEU, appears to believe that its role in trade mark life is to make the law and practice as complicated and inconsistent as possible. They did this with the IP Translator case in 2012 and the existing clear and simple position regarding the interpretation of class heading claims was rendered complex and opaque.

One might argue that, at least in their Cactus decision, the Court has now made the position (on class headings) certain for older EUTM registrations (dated prior to June 2012). However, one would be wrong in such an assertion. This is because, after the GC ruling (on 15 July 2015) but before the CJEU confirmation (on 11 October 2017), the proprietors of EUTMs filed prior to 22 June 2012, and with a class heading claim, were given the chance to confirm whether or not they sought protection beyond those goods/services covered by the literal meaning of the class heading. The deadline to file this confirmation expired on 24 September 2016. If such confirmation were filed the coverage of the relevant EUTM would extend to the alphabetical list of goods (or services) in the edition of the Nice classification in force at the date of filing; note, not to all of the goods (or services) in that class.

If no such confirmation were filed, then the specification would only include those goods (or services) that were covered in a literal sense by the words of the relevant class heading. Under this provision, now set out in the EUTM Regulation 2017/1001 at Article 33 (8), whether a confirmation were filed or not, the specifications of the Cactus SA EUTMs would not encompass “retailing of natural plants and flowers, grains, fresh fruits and vegetables” in class 35. The CJEU sidestepped this potential difficulty in the Cactus case by simply pointing out that Art. 33 (8) (and earlier variants thereof) were not in force when the GC gave its decision (on 15 July 2015), even though it was in force when the CJEU confirmed that decision (on 11 October 2017).

Presumably the new legislation (Art. 33(8)) will trump the CJEU’s Cactus decision in future and the class 35 specification of pre- 22 June 2012 EUTM’s (containing a class heading claim) will no longer extend to retail services of the type relied on by Cactus SA. However, in European trade mark world, this is by no means certain and a new case will, almost certainly, find itself before the European Court. One would hope that such a case would clarify the position once and for all. However, a ruling that makes a murky situation even murkier would not be a surprise.

Turning to the issue of genuine use and, in particular, the finding (by both the GC and CJEU) that the use of the stylised cactus device below,

can constitute genuine use of the Cactus plus stylised cactus device combination mark, here,

Cactus trade mark

this appears to overturn literally decades of European trade mark practice and, almost certainly, opens a huge can of worms for those considering the issue of genuine use in the future. Bearing in mind the relevant terms of the EUTMR (now 2017/1001, Art. 18(1)(a)) namely

“1…. The following shall also constitute use within the meaning of the first subparagraph:

(a) use of the EU trade mark in a form differing in elements which do not alter the distinctive character of the trade mark in the form in which it was registered…”

Let us look at a number of possible “use” scenarios and consider whether the mark in use would (or should) save the registered mark because it has the same “semantic content.”

Would, for example, the use of the “fishbone” figurative mark below (in relation to clothing)

save a registration for the following fishbone (word) and fishbone device combination mark in class 25?

What about the use of the well-known bovine device mark shown below for cheese products?

would such use save a class 29 registration for the “La vache qui rit” combination mark? After all, the device on its own does show a cow laughing.

Finally, imagine if the following combination mark were registered for sports clothing

would the use of the crocodile device shown below, with or without the word LACOSTE, constitute genuine use in class 25? After all, the well-known former tennis player Rene Lacoste was famously nicknamed The Crocodile. Plenty of identical semantic content, there, methinks.

I jest, of course. In the writer’s view, it should be absolutely clear that, in all the above cases, the mark in use would not constitute use of the word/device combination mark, and for a very simple reason. The mark in use does not employ the distinctive word mark found in the registered trade mark. This key omission should always be enough to knock any question of establishing genuine use on its head. If the registered mark consists of a distinctive device and non-distinctive written matter, then the position on genuine use might be different. However, if the word mark is distinctive, in respect of the goods or services of interest, the answer to the genuine use question, in the absence of the word mark, should always be a resounding no. In the writer’s view, this would even apply to a combination such as Shell word and a shell device for petroleum products. The absence of the word mark again significantly alters the distinctive character of the mark that is in use.

A “genuine use” comparison of registered and used marks should take into account the idea behind both marks to a small extent, as it should also consider the phonetic comparison (again, to a small extent). However, the overwhelming issue to be considered will, nearly always, be the visual comparison. In a word/device combination mark, the absence of a distinctive word mark will always have a significant impact on that comparison. It is difficult to imagine a situation where such an absence (of a distinctive word mark) should not lead to a finding of a lack of genuine use of the combination mark.

And none of the above addresses other areas of concern that are raised by the GC/CJEU’s comments in the Cactus case. For example, would the use of the distinctive word mark Cactus (for class 31 goods other than cactus) save an EUTM registration for Cactus and stylised cactus device for the same goods? Plenty of EUIPO case law suggests that this was not the case in the past. See, for example, the Board of Appeal decision R1140/2006-2 (Amberes v Henkel) where the use of the word mark ESCORPION did not constitute genuine use of the combination ESCORPION plus a scorpion device mark. See also Board of Appeal decision R2209/2014-2 (Westerman v Diset) where use of the stylised form of BAMBINO did not save a registration for BAMBINO plus a stylised doll device.

One hopes that the Cactus decision will not overturn this earlier, eminently sensible, EUIPO practice. As for the issue of infringement, and the possible impact of the Cactus decision in that prickly area, that is probably for another time.

When the European trade mark regulation came into force nearly a quarter of a century ago, there were many areas of practice that were viewed by practitioners and tribunal’s as self-evident truths. During the intervening period, the CJEU has cast out, or simply denied, many of these truths. This may be good for trade mark attorneys, but in a business area that prefers stability, consistency and predictability, it is generally not so good for their clients.

Dr Stephen James
Ward Trade Marks

Ward Trade Marks conducts contentious trade mark proceedings before the UK and the EU IPO. If you need more information on opposing a trade mark application or defending an opposition please contact Rachael or Bill Ward: [email protected], or call us on 01284 774841

 

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October 24, 2018 Rachael