• ALICANTE ABSTRACTS

    New Life for Wide Claims

    OHIM Revocation Practice Takes Shape

    As the CTM system matures, the number of challenges to CTM registrations, particularly on the basis of non-use, is on the rise. As the decisions are handed down, OHIM’s practice in relation to maintenance of registrations is taking shape.

    A recent decision on wide specifications, in particular, breathes new life into the practice of broad claiming by CTM applicants and raises the bar for those who challenge them.

     

    Narrow Use Sustains Wide Protection

    Use for a narrow range of goods can sustain broad specification terms, but must be assessed on a case-by-case basis. So held the Cancellation Division in Out of the Blue KG v Kamsut Inc. (Revocation 712C), a non-use revocation action concerning the trade mark KAMA SUTRA.

    The mark was registered in respect of “bleaching preparations and other substances for laundry use; cleaning, polishing and scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices” in Class 3. The applicant for cancellation, Out of the Blue KG, alleged 5 years of non-use under Article 50 (1) (a) of the CTM Regulation.

    In conformity with previous decisions, OHIM confirmed that the burden of proof in a non-use cancellation action was on the registrant. Kamsut Inc. duly filed evidence of its use of KAMA SUTRA in the Community in respect of essential oils, bath salts, bath gels, body powders and body balms.

     

    Soaps and Cosmetics Broadly Construed

    OHIM held that the evidence of use in respect of “essential oils” was sufficient to maintain protection for that term. It consulted the dictionary on the meaning of “essential oils” and “perfumes,” and decided that the two were similar enough that use for essential oils would maintain protection for “perfumery” as well.

    More notably, however, OHIM upheld the registration for the broad terms “soaps” and “cosmetics.”

    It held that the evidence of use in respect of “bath salts” and “bath gels” was sufficient to sustain the claim for “soaps” at large, and use for “body powders” and “body balms” was enough to maintain the entire claim to “cosmetics.” The specific items in respect of which use had been shown fell within the broad claims, and that was enough to allow the protection to be retained.

    This view was taken despite OHIM’s recognition that the broad term “cosmetics,” in particular, predominantly included other types of goods such as lipstick, mascara and the like.

     

    Comment

    This interesting case shows that broad terms in specifications can enjoy a much longer shelf-life than originally thought.

    Unlike some countries, notably the U.S. and the U.K., OHIM accepts trade mark applications for very broad claims in respect of which there need be no use or genuine intention to use at the date of filing. The efficacy of broad claims against third parties, however, was thought to drop substantially after the CTM had been registered for 5 years, because of the availability of non-use attack.

    It is now clear, however, that OHIM’s generous approach will permit the maintenance of broad terms based on use in respect of only one or two products, even ones at the borderline of the broad term’s definition.

    OHIM sounded a note of caution, however, in warning that whether use for just one product could maintain all goods in a category would have to be assessed on a case-by-case basis. It is possible, therefore, that a different approach may be taken in the case of very broad categories of goods, such as computer software or printed matter. OHIM’s remarks on “cosmetics” indicate that it may have found this to be a borderline case.

    Continued challenges to broad claims are likely. As the number of CTMs increases, the potential for conflict with new brands also rises, and non-use revocation is a key strategic method of reducing or avoiding infringement risks posed by CTMs. Overly generous protection for broad terms on the basis of narrow use may make the CTM system attractive for users, but could create a bottleneck in the system for those launching new brands. The issue is therefore of sufficient importance that it is likely to find its way at some point to the CFI or ECJ.

    Until then, however, it is clear that broad terms in specifications will continue to be the norm for CTMs, and are likely to offer protection which is not only wide, but surprisingly sustainable.