ALICANTE ABSTRACTS

CTM Proof of Use: Will a Narrow Specification Fail If Use Is Even Narrower?

Although broad specifications remain the norm, it is not uncommon for CTM applicants to tailor their goods or services claims to reflect their specific interests. Such tailoring is often a strategic decision. A narrower, more defined specification is less likely to attract opposition from those with discrete commercial interests, for example, and may therefore prove a more cost-effective way of protecting less key brands.

Where the specification of a CTM registration is already quite narrow, however, what is the impact in opposition proceedings if the registrant can only prove use for an even narrower sub-category?

 

Reckitt’s Opposition

The CFI examined this question recently in Reckitt Benckiser (España) SL v OHIM (Case T-126/03).

Reckitt owned a Spanish national registration for the trade mark ALADDIN in respect of “polish for metals” in Class 3. Based on this mark, it opposed a later CTM application for ALADIN of Aladin Gesellschaft für Innovative Mikrobiologische Systeme GmbH in inter alia Class 3, for goods which were eventually restricted voluntarily to “preparations for cleaning waste pipes for the metal-working industry, except textile auxiliary agents and auxiliary agents.”

Aladin challenged Reckitt to prove use of its earlier mark under Article 43 (3) CTMR. Reckitt furnished proof that it had used the mark in Spain during the relevant period in respect of cotton impregnated with a metal polishing agent, designed for use in polishing metal.

OHIM, and later the Board of Appeal, rejected the opposition. It held that proof of use for “magic cotton” could not sustain the full claim to “polish for metals,” and that the opposition would only be examined on the basis of protection for “cotton impregnated with a polishing agent.” This was regarded as different in nature, intended purpose, method of use, end users and distribution channels from “preparations for cleaning waste pipes for the metal-working industry.” Hence, in spite of the similarity between the marks, the opposition failed.

 

Reckitt Cleans Up on Appeal

On appeal to the CFI, Reckitt argued that the Board of Appeal had erred in deeming the earlier mark to be registered for such a narrow category of goods.

It submitted that the specific product for which it had shown use fell within the narrow category, “polish for metals,” for which the earlier mark was registered. There was no justification, it asserted, for narrowing the ambit of protection yet further when use had been shown for a product falling within that narrow category.

In considering this submission, the Court stepped back to survey the purpose of proof of use challenges under Article 43 (2) and (3). It considered that the objective of these provisions was to limit conflicts between marks by ensuring that only trade marks which have been used are protected. Consequently, it followed that examination of proof of use should not seek to determine the precise scope of a registered mark owner’s protection. Rather, it should aim to determine whether the mark has in fact been used for the goods or services in respect of which it is registered, a far more general test.

The Court recognized that there was a need to determine scope of protection in some cases. Where marks are protected for broad claims, for example, which can be broken down into various categories, proof of use which relates only to some of those categories should be taken as supporting the claim only in respect of those categories.

However, in the case of goods or services “defined so precisely or narrowly that it is not possible to make any significant sub-divisions within the category concerned,” then proof of genuine use of the mark within that category “necessarily covers the entire category for the purposes of the opposition.” If the goods for which use is shown are not in essence different from the registered goods, belong to the same group and cannot be divided except arbitrarily, then it is right to regard the goods as the same for the purposes of proof of use.

The CFI went on to find that the “magic cotton” for which Reckitt had proved use was indeed a type of “polish for metals.” It regarded this narrow category as too precise to be further broken down. Consequently, the registration should have been deemed registered in respect of “polish for metals” for the purposes of the opposition.

 

Comment

For Reckitt, this appeal was critical. The overturning of the Board of Appeal’s decision on proof of use was vital for success in the opposition. Indeed, once Reckitt’s full specification was considered, the CFI agreed that there was similarity of goods and a likelihood of confusion.

This decision has a wider impact, however. Proof of use is integral to a range of OHIM proceedings, including oppositions, invalidations and revocations. Board of Appeal guidance to date had suggested that use of a mark for goods within a sub-category would not sustain protection in respect of a wider category. The CFI’s clarification on this issue should have an early impact on OHIM practice.

Recognizing use for specific goods or services as sustaining an entire category was a practical approach, given the virtual impossibility of proving use in respect of all conceivable variations of goods and services covered by a registration. It reflects, with more considered analysis, the approach of the Board of Appeal in KAMA SUTRA (Revocation 712C) which upheld a claim to “soaps” based on use for “bath gels” and a claim for “cosmetics” based on use for “body powders” and “body balms.”

The CFI’s approach, moreover, accords with the common-sense approach of the English courts. The English courts adopt the point of view of the average consumer, asking how he or she would define the goods for which the mark has been used. The CFI, in its turn, considered whether the use shown can reasonably be said to reflect a single well-defined category within a specification which cannot be broken down further. Although the CFI’s language is more technical, nonetheless it reflects a shared endeavour to identify what, in common-sense terms, the registered proprietor has been doing.

This practical application of the law is welcomed. Its effect on OHIM proceedings will be watched with interest.