For EU trademarks filed before June 22 2012, the scope of protection granted at the time of registration encompasses even goods and services that may later be added by a declaration, if the trademark was originally protected for all the goods and services under the heading of its Nice class. Furthermore, the consideration of evidence not presented in due course can be reprimanded, but does not vacate the judgment if the belated evidence was not of vital importance but merely additional evidence.

On May 15 2019 the Fifth Chamber of the CJEU (C-653/17) ruled on an appeal filed by VM Vermögens-Management GmbH. VM had obtained registration for the EU trademark "Vermögensmanufaktur" for services in Classes 35 and 36 of the Nice Agreement in May 2011 (the subject mark). DAT Vermögensmanagement GmbH filed for a declaration of invalidity under Article 7 I b, c Regulation 207/2009 (EUTMR). This was rejected by the Cancellation Division of the EUIPO. Following DAT's appeal, the Board of Appeals declared the subject mark invalid for services in Classes 35 and 36, arguing that "Vermögensmanufaktur" was descriptive and devoid of a distinctive character. VM then appealed to the General Court (GC) where the Board's decision was upheld. During this appeal, VM filed a declaration under Article 28 VIII EUTMR, Article 1 XXVIII Regulation 2015/2424, specifying which services it had intended to be included in its original trademark application. The latter regulations state that owners of European trademarks applied for before June 22 2012 can file a declaration that they had intended a greater scope of protection than covered by the literal interpretation of the Nice class headings. The background to this concept is the CJEU decision Specsavers C-252/12 on the scope of valid use.

As for the legal effect of the declaration filed in 2016 on scope of protection under Classes 35 and 36, VM argued that the GC had misinterpreted said declaration in light of the EUTMR, which meant that its trademark could only be declared invalid for the goods and services covered by a literal understanding of the class headings 35 and 36, but not for those added by VM's declaration.

However, the CJEU held that the declaration did not change the scope of protection enjoyed under Classes 35 and 36 but merely ensured that the services covered by the declaration continued to be protected even though they were not claimed under the initial literal meaning. Therefore, the Board and the GC's decisions did consider all the services intended although these decisions were rendered prior to the declaration of VM.

On the point of (lack of) distinctiveness of the word sign "Vermögensmanufaktur", the GC had held that it was laudatory and neither sufficiently original, resonant nor unusually structured. Furthermore, the GC ruled that a descriptive trademark was always devoid of distinctive character but a non-descriptive trademark was not necessarily distinctive. The CJEU also agreed with the GC's assessment on these points.

Finally, the appeal centred on the consideration of annexes which had not been submitted in due time, according to the Board's ruling. The GC had decided that these documents had not been decisive for the Board's decision and were, thus, merely to be regarded as additional evidence. Therefore, their citation does not serve to vacate the decision by the Board. The CJEU even rejected these grounds of appeal as inadmissible, for VM had not put forward arguments different to those used at first instance.

Stephan Schneller