ECJ Confirms IP Translator and Praktiker Bau Decisions Are Not Retroactive
In a recent ruling, the ECJ has confirmed that there is no retrospective application of the IP Translator and Praktiker Bau cases.


In a recent ruling, the European Court of Justice (ECJ) confirmed that the IP Translator and Praktiker Bau cases do not apply to EU trade marks which were registered before the delivery of those judgments. The decision provides important clarification on the historical scope of application of these significant cases. 


Under the Nice Agreement, goods and services are categorised in classes which correspond to particular fields of commercial activity. Each "class heading" provides "general indications" relating to the fields to which goods or services belong as well as a detailed alphabetical list of items proper to each class. For example, the general indications for class 35 are: "advertising; business management; business administration; office functions" and services such as "administration of frequent flyer programs" and "administration of consumer loyalty programs" are included in its alphabetical list. 

Prior to IP Translator the position was that a trade mark application which used all of the general indications in a class constituted a claim to all of the goods and services falling within that class (not just those contained in its alphabetical list). The ECJ overturned that approach in IP Translator and then an application which used all of the general indications was limited to a claim to all of the goods or services contained in the alphabetical list. 


The current ruling concerned an application for a EU figurative mark 'CACTUS OF PEACE CACTUS DE LA PAZ', to which an opposition was mounted by Cactus SA (a Luxembourg supermarket chain) (Cactus) based on the likelihood of confusion with its own earlier marks. (Cactus' marks had been registered in the early 2000's in a number of classes, including in services class 35.) 

Cactus' opposition was initially partly upheld by the EUIPO which considered that Cactus had shown "genuine use" of its earlier word mark, inter alia for "retailing of natural plants and flowers, grains; fresh fruits and vegetables" in class 35. The Board of Appeal of EUIPO then dismissed the opposition, partly on the basis that the specifications for Cactus' earlier marks did not cover such retail services in class 35. 

On appeal, the General Court of the EU (The "General Court") held that dismissing the opposition on that basis was incorrect, noting that the marks had been registered before the EUIPO's change of practice as regards the specification of marks, and that, accordingly, the line of authority established in cases such as IP Translator and Praktiker Bau (which had held that while a retail trade in goods is a service falling within class 35, an application must specify the goods/types of goods to which the retail trade relates) should not apply. The EUIPO submitted that the General Court, in holding that these cases did not apply to trade marks registered before the delivery of those judgments, was disregarding the retroactive effect of case-law, which may only be limited in exceptional circumstances.

The ECJ held that the General Court was right to hold that the authority derived from these cases did not apply to Cactus' earlier trade marks as the judgments only concerned trade mark applications and did not concern the scope of protection of trade marks already registered at the date of delivery of the judgments. Therefore, for Cactus, a designation of the class heading of class 35 covered all the services in that class (including services consisting of the retail of goods) and Cactus was not required to specify the goods or types of goods to which the retail trade related.

Contributed By: Brian McElligott

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