Keywords

Summary



Keywords

1. Community trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark

(Council Regulation No 40/94, Art. 43(2) and (3))

2. Community trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark

(Council Regulation No 40/94, Art. 43(2) and (3))

3. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services

(Council Regulation No 40/94, Art. 8(1)(b))

Summary

1. The last sentence of Article 43(3) of Regulation No 40/94 on the Community trade mark is to be interpreted as meaning that if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. In that regard, it is in practice impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(see para. 23-24)

2. The last sentence of Article 43(3) of Regulation No 40/94 on the Community trade mark is to be interpreted as meaning that if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong.

Since consumers are searching primarily for a product or service which can meet their specific needs, the purpose or intended use of the product or service in question is vital in directing their choices. Consequently, since consumers do employ the criterion of the purpose or intended use before making any purchase, it is of fundamental importance in the definition of a sub-category of goods or services. As regards, more particularly, a therapeutic preparation, its purpose and intended use are expressed in its therapeutic indication.

(see paras 23, 29-30)

3. For German patients suffering from respiratory illnesses, there is a likelihood of confusion between the word mark RESPICUR, the registration of which as a Community mark is sought for ‘therapeutic preparations for respiratory illnesses’ falling within Class 5 of the Nice Agreement and the word mark RESPICORT, registered earlier in Germany for ‘pharmaceutical and sanitary preparations; plasters’ falling within the same class, since the products covered are identical and the conflicting marks are visually, phonetically and conceptually similar. Since end consumers’ level of attention and knowledge is higher than average because of the serious nature of the illnesses from which they suffer, they will thus be able to distinguish the component ‘respi’ in the two marks in question and to understand its conceptual content, which refers generally to the nature of their health problems. However, their limited knowledge of medical terminology will prevent them from being able to discern the conceptual references of the components ‘cur’ and ‘cort’. By contrast, for German health care professionals there is no likelihood of confusion since, because of their knowledge and experience, they will generally be able to understand the conceptual meaning of the terms referred to by the ‘repsi’ component and the ‘cur’ and ‘cort’ components so that the earlier mark may be regarded as having a weak distinctive character, particularly for health care professionals.

(see paras 37, 58-59, 62, 72-73)