Background
On 28 December 2012, the applicant, ACTC GmbH sought to register the EU trademark application “TIGHA”, for goods in classes 18 and 25. Taiga AB, filed a notice of opposition on the grounds of likelihood of confusion pursuant to Article 8(1)(b) based inter alia on its rights to TAIGA for clothing in class 25.
The earlier mark was subject to use and during EUIPO proceedings Taiga demonstrated genuine use of its mark for "outdoor jackets, trousers, short pants, working overall, underwear, headgear, gloves, socks, and belts" which were all designed for weather-protective outdoor clothing essentially for workers working in extreme heat, cold or wet conditions.
While losing at first instance, Taiga's opposition was partially upheld by the Board of Appeal. The decision included the finding that Taiga had shown use of its mark for a range of class 25 goods including for the broad category of "clothing".
Upon an application for annulment by ACTC, the General Court (GC) upheld the Boards of Appeal’s decision in its entirety (in case T 94/17).
Action before the CJEU (C-714/18P)
On 14 November 2018, ACTC brought an action before the Court of Justice (CJEU) seeking to set aside the GC decision. ACTC's grounds were based on the following key arguments:
- The GC wrongly concluded that Taiga proved use for the broad category of "clothing". A more narrow subcategory was appropriate in the present case because Taiga proved use only for weather-protective outdoor clothing which was intended for a specific purpose (namely protecting the human body). This purpose is different to the purpose of other types of clothing such as adorning, covering and concealing the human body. Goods with such different intended purposes are also normally aimed at different public and sold through different channels.
- The GC wrongly concluded that there was likelihood of confusion between the marks at issue. In particular, the Court made an incorrect assessment concerning the conceptual dissimilarities between the signs, which should have been established in relation to the whole territory of the EU and are such as to counteract the visual and aural similarities between the signs.
Determining an independent sub-category and intended use of the products
The CJEU upheld the contested decision and confirmed the case law developed by the GC in its judgment of 14 July 2005, Reckitt Benckiser (España) v OHIM – Aladin (ALADIN), according to which the breadth of a registered category of goods is the key aspect for defining a coherent sub-category of goods capable of being viewed independently.
As established by the GC in ALADIN, if a trademark 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 necessarily covers the entire category for the purposes of the opposition. However on the contrary if the mark has been registered for a broad category of goods or services and the owner only shows use for narrower goods or services, it may be appropriate to find that use has been shown only for a narrower subcategory of the broad category of goods or services for which the mark is registered. The decisive criterion for defining such sub-categories is by looking at the purpose or intended use of the goods or services at issue. The GC has also consistently confirmed that the nature and characteristics of those goods or services is irrelevant. The CJEU endorsed this approach.
Moreover, the CJEU also confirmed that in the present case it was not appropriate to consider the goods for which use was shown (weather-protective outdoor clothing) to form a narrower sub-category of clothing.
The CJEU fully agreed with the Opinion of the Advocate General that clothing goods fulfil, as well as their primary function (that is, to cover, conceal or protect the human body against adverse weather conditions), also a further common aesthetic function. Although consumers look for clothes to protect themselves against the rain, or to protect themselves against the cold, they may also look for the most aesthetically pleasing garment.
Therefore, the CJEU considered that it is not possible to distinguish between the uses consisting of ‘protecting' the human body, ‘adorning' it, or ‘concealing' it and ‘covering' it. All of these are common intended uses of clothing goods.
Far from being mutually exclusive, those different uses are combined for the purpose of putting those goods on the market. The CJEU therefore concluded that the General Court was right not to take into account each of the uses of the goods at issue — to cover, conceal, adorn or protect the human body — in isolation.
In view of this the CJEU dismissed ACTC's claim that the mark should have been deemed to be protected only for weather-protective outdoor clothing instead of the broad category of clothing. Furthermore the CJEU also dismissed ACTC's claims that the GC should have taken into account that Taiga's goods were aimed at different publics and were sold in different shops. The CJEU clarified that these factors are not relevant for defining an independent subcategory of goods for purposes of Article 42(2) of Regulation No 207/2009.
Likelihood of confusion
In a second ground of appeal, ACTC also requested the CJEU to make a new assessment of the visual, aural and conceptual similarities between the signs at issue, which was rejected by the CJEU as inadmissible on the basis that an assessment of a factual nature is not subject to review by the CJEU on appeal.
In relation to the conceptual similarity of the signs, the CJEU upheld the analysis made by the GC and the AG, and concluded that, according to Article 8(1)(b) and settled case law, the word “taiga” would need to be clearly and immediately understood by consumers in the whole territory of the EU (not only in the southern and western parts of the EU) in order to be capable to counteract visual and phonetical similarities between the signs.
Next steps
This decision reinforces the well-established criterion developed in ALADIN and consistently applied by the GC when analysing the concept of "part of goods and services" for purposes of proving use of trade marks.
The CJEU judgment is good news for trademark owners applying for broad categories of goods or services and who are looking to expand and enhance their range of goods or services over time. While such owners should certainly be mindful that their specifications will likely be narrowed down once proof of use of their mark is required, the CJEU judgment provides reassurance that an overly strict approach will not be applied. The judgment however also means that junior rights holders will have to be mindful that there is a limit to which they can revoke vulnerable senior rights and thereby avoid successful trademark infringement or opposition actions being brought against them.
Authored by Gracia Tordesillas Martinez
