This article first appeared on World Trademark Review in May 2019. For further information please go to www.worldtrademarkreview.com.
Board of Appeal found that VERMÖGENSMANUFAKTUR was descriptive and devoid of distinctive character for services in Classes 35 and 36
Mark owner made Article 28(8) declaration to specify services which it had intended to cover at time of original application
General Court rejected mark owner’s appeal, and CJEU confirmed
In December 2009 VM Vermögens-Management GmbH (‘VM’) applied to register the word sign VERMÖGENSMANUFAKTUR as an EU trademark (EUTM) for services in Classes 35 and 36 using the Nice class headings (which included advertising, business management, asset management and financial consultancy). The mark was subsequently registered in May 2011.
In July 2012 DAT Vermögensmanagement GmbH applied for a declaration of invalidity for all of the services for which the trademark was registered. The grounds for invalidity were under Article 7(1)(b) (lack of distinctive character) and Article 7(1)(c) (descriptiveness) of Regulation 207/2009 (now Regulation 2017/1001).
The Cancellation Division of the EUIPO rejected the application for invalidity. However, on appeal the Board of Appeal disagreed and declared the trademark invalid for the services in Classes 35 and 36, finding it descriptive and devoid of distinctive character. VM appealed to the General Court in July 2015.
Article 28(8) declarations
Under Article 28(8) of Regulation 207/2009 (as amended by Regulation 2015/2424), owners of EUTMs filed before 22 June 2012 had until 24 September 2016 to declare that their intention on the date of filing had been to seek protection for goods and services beyond those covered by the literal meaning of the Nice class heading, provided such goods and services were included in the alphabetical list for that class.
Prior to the decision of the Court of Justice of the European Union (CJEU) in the IP TRANSLATOR case (C- 307/10), class headings were considered to be a claim to all the goods and services within that particular class. Following that decision, the EUIPO has interpreted Nice class headings literally. The Article 28(8) declaration was a provision to provide a transitional period for trademark owners to adjust to the change.
General Court decision
In September 2016 VM filed a declaration under Article 28(8) to specify the services which it had intended to cover at the time of its original application. Its new list of services was published in the European Trademarks Bulletin in November 2016.
One of VM's arguments at the appeal was that the board's decision should only apply to the services in Classes 35 and 36 in its original application and not those that were added by the 2016 declaration.
The General Court rejected VM's appeal in its entirety.
VM had six grounds of appeal and the CJEU dismissed them all (Case C 653/17 P). Key aspects of its judgment include the following:
Effect of the 2016 declaration
The CJEU rejected VM's first and second grounds of appeal which centred on the effect of its 2016 declaration. VM argued that it had been misconstrued by the General Court, which had also failed to state proper reasons for its decision. The court said that the 2016 declaration was not intended to add any new services to the scope of protection; it was to ensure that the services covered by that declaration continued to enjoy such protection, even though they were not clearly covered by the literal meaning of the indications included in the Class 35 and 36 headings.
Consequently, although the Board of Appeal's decision was made before VM filed its declaration, it covered all of the services for which the trademark was registered, and as a result its decision resulted in the invalidity of the mark for all those services.
The court found VM's third ground of appeal under Article 7(1)(c) inadmissible on the basis that VM had merely disputed the General Court's findings of fact in relation to the perception of the trademark and its descriptive character. The General Court had considered that the public was able to understand the meaning of the German words ‘Vermögen’ and ‘Manufaktur’ and that the combination of those two words had a clear and unambiguous meaning, namely "asset manufactory". VM had not pleaded any distortion of those facts or evidence.
The court considered that VM's fourth ground of appeal under Article 7(1)(b) was unfounded as it was based on a misreading of the General Court's judgment. The General Court had considered that the trademark was not sufficiently original, resonant or with an unusual structure and that, consequently, the relevant public would not be able to distinguish the services provided by VM from those provided by others in the same business sector. The General Court's decision had not just been based on the laudatory character of the mark, as alleged by VM.
This decision of the CJEU confirms that declarations made under Article 28(8) during the transitional period following the IP TRANSLATOR case do not add new goods or services to the scope of protection of a trademark, but merely clarify the scope. The facts of this case were unusual in that VM's Article 28(8) declaration was made mid-way through the proceedings after the Board of Appeal's decision and before General Court had heard the appeal.
In relation to the other grounds of appeal raised by VM, the judgment illustrates the difficulty in overturning decisions of the General Court when the grounds are largely a repeat of arguments put forward to that court.
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