Two cases currently with or recently ruled upon at the CJEU, Cactus (C‑501/15 P) and Brandconcern (C‑577/14 P), appear to have interpreted the IP Translator judgement differently than was intended, sparking some uncertainty for trademark owners.
Following the IP Translator case and its codification in the EU trademark legislative reform package, applicants must file in specific goods and services, indicating with sufficient clarity and precision what they aim to protect.
The new Article 28(8) of the EU Trademark Regulation allowed a period of six months for trademark owners to add new products/services to their EU trademarks filed before 22 June 2012.
Cactus and Brandconcern, however, have indicated that IP Translator does not apply to trademarks that had been registered before the date of the judgement.
According to Sarka Petivlasova, senior associate at Hogan Lovells, the CJEU’s February ruling in Brandconcern indicated that IP Translator has no retroactive effect, meaning that trademarks registered before 21 June 2012 cannot be amended.
The CJEU also seemed to suggest that EU trademarks can protect goods and services outside of the literal meaning of the included class headings.
Cactus, while still under consideration, has received a preliminary opinion from the advocate general, who went one step further and said EU trademarks could potentially cover all goods and services that fall within the class concerned.
As the advocate general noted in Cactus: “Consequently, Brandconcern does not constitute an authority validating [the EU Intellectual Property Office’s] approach … in relation to the assumption that a trademark registered before the cut-off date of 21 June 2012 can at most afford protection to the goods or services mentioned in the relevant alphabetical list.”
“By the same token, Brandconcern should not be read as precluding, from the outset, that protection afforded by trademarks registered before the judgement in IP Translator was given could extend beyond the goods and services referred to in the alphabetical list of a given class.”
Petivlasova added: “It remains to be seen whether the advocate general’s opinion in Cactus will be followed.”