“This article first appeared in WTR Daily, part of World Trademark Review, in September 2024. For further information, please go to www.worldtrademarkreview.com.”
- The EUIPO found that Tertianum AG had failed to demonstrate the genuine use of its earlier mark for the services for which it was registered
- The court confirmed, considering the Nice Classification and its explanatory notes for Class 35
- The court confirmed, considering the Nice Classification and its explanatory notes for Class 35
With its decision in Case T‑73/23, dated 4 September 2024, the General Court has dismissed a request for annulment by the applicant, Swiss company Tertianum AG, of the decision of the Board of Appeal of the EUIPO in Case R 1706/2021-4.
Background The applicant is the owner of International Registration (IR) No 646578 for the mark below (the German word element may translate as “residing and living in the third age”), claiming “business and commercial management of establishments, namely management of institutions in the health and care sectors, in particular for retirement homes” in Class 35, and “consultations, promotion and planning of establishments, namely institutions in the health and care sectors, in particular for retirement homes” in Class 42:
Based on the German part of its IR, on 13 December 2016 the applicant filed an opposition against the EU part of IR No 1305367 for TERTIANUM, owned by German company DPF AG, against all the services claimed in Classes 35, 36, 41, 43, and 44, including similar services relating to “business management” in Class 35. The applicant relied on Article 8(1)(b) of Regulation No 207/2009 (now Regulation 2017/1001), arguing that there was a risk of confusion between the respective marks.
Both the Opposition Division and the Board of Appeal of the EUIPO rejected the opposition, finding that the applicant had not demonstrated the genuine use of its earlier mark within the meaning of Articles 47(2) and (3) of the regulation. Particularly, it was held – and was common ground between the parties – that the documents of use submitted by the applicant (i) only referred to services provided to end users (ie, clients of retirement homes), and (ii) did not relate to the services claimed in Class 42.
Decision The applicant asserted that its client-related services for retirement homes fell under its Class 35 services, which not only “aim at assisting business undertakings” (“establishments”), but also “designate the operation of one’s own homes for the elderly”. In support of this argument, the applicant referred to the German term ‘Betriebsführung’, arguing that it derived from ‘einen Betrieb führen’ (ie, ‘to run/operate/manage a business’); therefore, the services also covered “operating one’s own business”.
The court rejected this argument, holding that the literal, customary and ordinary meaning of the words ‘business and commercial management of establishments’ referred to the ‘activity of managing an undertaking’, and not to ‘operating’. Further, the German word ‘führen’ must be understood as meaning ‘to manage’.
Here, the court also considered the Nice Classification and its explanatory notes concerning Class 35. While only administrative in nature, the Nice Classification system relies on the so-called ‘class headings’, which read as follows for Class 35: “advertising; business management; business administration; office functions”. The explanatory notes to Class 35 describe these services as being “in favour of a commercial business, undertaking or enterprise”, and not of clients – let alone one’s own business.
The court concluded that the nature and purpose of these Class 35 services confirmed the customary and ordinary meaning of the words ‘business and commercial management of establishments’. Therefore, the court also rejected the applicant’s plea that the services claimed did not provide the wording “for others”, as used in the Nice Classification in connection with other services and that, therefore, the services claimed may also relate to one’s own business. Here, the court stated that:
- the specific wording claimed was not a class heading, but was chosen by the trademark applicant; and
- the wording “for others” was redundant since a mark must be used “outwardly”.
Finally, concerning the applicant’s assertion that the intention of the trademark applicant was wrongly found to be irrelevant since i operated its own homes for the elderly, the court disagreed, holding that the intention of the trademark applicant was not relevant for the purpose of interpreting the specification of the services covered by the earlier mark.
