CA-2024-00277 - [2025] EWCA Civ 1000

If use is only proved for some goods or services falling within the specification, a question may arise as to whether the registration should be partially revoked so as to limit the specification. The judge cited at [131] the following summary of the relevant principles by Kitchin LJ (as he then was) in Merck KGaA v Merck Sharp and Dohme Corp [2017] EWCA Civ 1834, [2018] ETMR 10:

“245.

First, it is necessary to identify the goods or services in relation to which the mark has been used during the relevant period.

246.

Secondly, the goods or services for which the mark is registered must be considered. If the mark is registered for a category of goods or services which is sufficiently broad that it is possible to identify within it a number of subcategories capable of being viewed independently, use of the mark in relation to one or more of the subcategories will not constitute use of the mark in relation to all of the other subcategories.

247.

Thirdly, it is not possible for a proprietor to use the mark in relation to all possible variations of a product or service. So care must be taken to ensure this exercise does not result in the proprietor being stripped of protection for goods or services which, though not the same as those for which use has been proved, are not in essence different from them and cannot be distinguished from them other than in an arbitrary way.

248.

Fourthly, these issues are to be considered from the viewpoint of the average consumer and the purpose and intended use of the products or services in issue. Ultimately it is the task of the tribunal to arrive at a fair specification of goods or services having regard to the use which has been made of the mark.”

The issue which arises on this appeal concerns the circumstances in which it is possible to identify within a category of goods or services one or more independent subcategories. As Lord Kitchin (as he had by then become) pointed out in Sky Ltd v SkyKick UK Ltd [2024] UKSC 36, [2025] Bus LR 251 (a judgment delivered after the judge’s decision in the present case) at [261], the approach explained in Merck v Merck:

“… must now be seen in light of the more recent guidance given by the CJEU in, for example: Ferrari SpA v DU (Joined Cases C-720/18 and C-721/18) EU:C:2020:854; [2021] Bus LR 106, at paras 36-53. There the CJEU explained, at para 40, that the essential criterion to apply for the purposes of identifying a coherent subcategory of goods or services capable of being viewed independently is their purpose and intended use.”

The judge quoted at [134] the Court of Justice’s earlier decision in Case C-714/18 P ACTC GmbH v European Union Intellectual Property Office [EU:C:2020:573] at [44]. That paragraph establishes the same proposition as Lord Kitchin extracted from Joined Cases C-720/18 and C-721/18 Ferrari SpA v DU [EU:C:2020:854] (which was not cited to the judge). Having regard to the arguments on the appeal, it is necessary to consider these two decisions in more detail. Both are assimilated law.

In ACTC the opponent relied upon a registration of the word mark TAIGA in respect of “clothing; outer clothing; underwear; footwear; headgear for wear and headwear; work shoes and boots; working overalls; gloves; belts and socks” in Class 25. The applicant required the opponent to prove use of that mark. Thus the context was proof of use for the purposes of opposition, but it is well established that the same principles apply in that context as in the revocation context. The opponent only produced evidence of use of the mark in relation to various kinds of weather-protective outdoor clothing for protection against cold, wind and rain. The Fourth Board of Appeal of the European Union Intellectual Property Office held that the opponent had proved use in relation to “clothing; outer clothing; underwear; headgear for wear and headwear; working overalls; gloves; belts and socks”.

On appeals to the General Court and then to the Court of Justice the applicant argued that weather-protective outdoor clothing for protection against cold, wind and rain was an independent sub-category of each of the categories of goods in respect of which the Board of Appeal had found use. Both the General Court and the Court of Justice rejected this argument. Having reiterated in the paragraph cited by the judge that, as established by earlier case law, “the criterion of the purpose and intended use of the goods or services at issue is an essential criterion for defining an independent subcategory of goods”, the Court of Justice said at [46]:

“In that regard, it should be noted that it is apparent both from the wording of the last sentence of Article 42(2) of Regulation No 207/2009 and from paragraphs 39 to 42 of the present judgment that it is important to assess in a concrete manner — principally in relation to the goods for which the proprietor of the earlier mark has furnished proof of use of the earlier mark — whether those goods constitute an independent subcategory in relation to the goods falling within the class of goods concerned, so as to link the goods for which genuine use of the earlier mark has been proved to the category of goods covered by the application for registration of that trade mark.”

It went on (internal citations omitted):

“50.

… the aim of the criterion of the purpose and intended use of the goods in question is not to provide an abstract or artificial definition of independent subcategories of goods; it must be applied coherently and specifically ….

51.

Accordingly, if, as in the present case, the goods concerned have several purposes and intended uses — as is often the case — determining whether there exists a separate subcategory of goods by considering in isolation each of the purposes that those goods may have will not be possible, contrary to what the appellant claims. Indeed, such an approach would not enable independent subcategories to be identified coherently and would have the effect … of limiting excessively the rights of the proprietor of the earlier mark, inter alia in that his legitimate interest in expanding his range of goods or services for which his trade mark is registered would not sufficiently be taken into consideration.

52.

The General Court was therefore 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, those different uses combining for the purpose of putting those goods on the market ….

53.

Last, the second complaint of the second part of the first ground of appeal, by which the appellant claims that the Court failed to take into account the fact that the goods were aimed at different publics and were sold in different shops, must also be rejected as unfounded, in so far as such criteria are not relevant for defining an independent subcategory of goods, but for assessing the relevant public ….”

In Ferrari Ferrari was the proprietor of an international registration protected in Germany of a stylised version of the word “testarossa” for “vehicles; apparatus for locomotion by land, air or water, in particular motor cars and parts thereof” in Class 12. Ferrari also had a German registration for the same mark in respect of a similar specification of goods. DU applied to revoke the registrations for non-use. Ferrari’s only evidence of use was in relation to (parts for) very high-priced luxury sports cars. The Landgericht Düsseldorf (Düsseldorf Regional Court) revoked both registrations. On appeal by Ferrari, the Oberlandesgericht Düsseldorf (Düsseldorf Higher Regional Court) referred six questions to the Court of Justice, the first of which asked in essence whether use in relation to very high-priced luxury sports cars was sufficient to maintain the breadth of the specification.

Having repeated at [40]-[41] what it had said in ACTC at [44] and [46], the Court of Justice said:

“43.

As is apparent from paragraph 37 of this judgment, the only relevant question in that regard is whether a consumer who wishes to purchase a product or service falling within the category of goods or services covered by the trade mark in question will associate all the goods or services belonging to that category with that mark.

44.

Such a situation cannot be excluded on the sole ground that, according to an economic analysis, the various goods or services included within that category belong to different markets, or to different market segments. This is all the more the case where there is a legitimate interest of the proprietor of a trade mark in expanding his range of goods or services for which his trade mark is registered (see, by analogy, … ACTC v EUIPO, C–714/18 P, EU:C:2020:573, paragraph 51).”

It went on to say that:

“the mere fact that the goods in respect of which a mark has been used are sold at a particularly high price and, consequently, may belong to a specific market is not sufficient for them to be regarded as an independent subcategory of the class of goods in respect of which that mark was registered” ([45]);

“the mere fact that the cars in respect of which a mark has been used are referred to as ‘sports cars’ is not sufficient to consider that they belong to an independent subcategory of cars” ([48]); and

“the concept of ‘luxury’ … could be relevant to several types of cars, so that the fact that cars in respect of which a trade mark has been used are classified as ‘luxury cars’ is likewise not sufficient for them to be regarded as an independent subcategory of cars” ([49]).

Accordingly, the Court concluded at [51]:

“It therefore appears, subject to verification by the referring court, that the fact that the company which is the proprietor of the marks in question in the main proceedings has used those marks in respect of replacement parts and accessories for ‘very high-priced luxury sports cars’ is not sufficient to establish that it has used those marks in respect of only some of the goods covered by them, for the purposes of Article 13 of Directive 2008/95.”