Opinion of the Advocate General — ECLI:EU:C:2016:571
Date: 2016-07-19
Language of the case: English
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - unfounded
Origin: Netherlands

Summary — Judgment of the Court (Fifth Chamber), 16 February 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 — Obligation laid down by a judgment of the Court — Effects — Temporal limitation (European Parliament and Council Directive 2008/95) 2. Appeal — Grounds of appeal — Lack of specific criticism of a point of the General Court’s reasoning — Failure to indicate the paragraphs of the judgment under appeal that are contested (Art. 256(1), second para., TFEU; Statute of the Court of Justice, Art. 58, first para.; Rules of Procedure of the Court of Justice, Arts 168(1)(d) and 169(2)) 1. In paragraph 61 of the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361), the Court of Justice took the view that, in order to respect the requirements of clarity and precision imposed by Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks, the applicant for a national trade mark who uses all of the general indications listed in the heading of a particular class of the Nice Agreement in order to identify the goods and services for which the protection of the trade mark is sought must specify whether the 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 relates to only some of those goods or services, the applicant will be required to specify which of the goods or services in that class are intended to be covered. However, in the first place, paragraph 61 of that judgment does not concern the proprietors of trade marks which have already been registered, but solely applicants for trade marks. In the second place, in paragraph 61 of that judgment of 19 June 2012, Chartered Institute of Patent Attorneys, the Court of Justice limited itself to specifying the requirements to which new applicants for national trade marks remain subject, who use the general indications of a class in order to identify the goods and services for which protection as a trade mark is sought. Such requirements help to prevent the situation in which it is not possible to determine with certainty the scope of the protection afforded by a trade mark when a trade mark applicant uses all the indications included in the heading of a class. It cannot, therefore, be held that the Court of Justice, by the judgment of 19 June 2012, Chartered Institute of Patent Attorneys, sought to question the validity of the approach set out in Communication No 4/03 of the President of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 16 June 2003 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations, according to which 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 that particular class. Consequently, the rule set out in paragraph 61 of that judgment is not applicable to the registration of a trade mark which took place before the delivery of that judgment. (see paras 28-31) 2. See the text of the decision. (see para. 37)