A recent decision of the EUIPO Cancellation Division provides important guidance on how proof of genuine use is assessed where a trademark is registered for broad categories of goods. Although the revocation action was only partially successful, the ruling clarifies the limits of protection maintained through use and the role of product subcategories in revocation proceedings.
Background
The contested EU trademark was registered for various food products in classes 30 and 32 of the Nice Classification, including flavouring syrups, sauces, confectionery, and ice creams in Class 30. The applicant sought revocation on the ground that the mark had not been put to genuine use for all the registered goods, while the proprietor submitted extensive evidence intended to demonstrate genuine use across the full specification.
The evidence, however, showed genuine use only for certain products.
The proprietor argued, in particular, that chocolate sauces and drizzles for which use was demonstrated should be considered part of confectionery, and that ingredients such as ice-cream bases or powders should qualify as use for ice creams.
The EU trademark proprietor also relied on an extract from the guidance document describing the food categories in Part E of Annex II to Regulation (EC) No 1333/2008 on Food Additives, elaborated by the European Commission, showing that the category “Confectionery” includes cocoa and chocolate products, other confectionery products that may or may not contain cocoa, chewing gum, decorations, and icings.
Cancellation Division ruling
The Cancellation Division ruled that the above-cited document is not relevant for trademark purposes, as it concerns food safety regulation rather than trademark classification. The assessment of whether goods are identical or similar must be based on the Nice Classification and established case law.
Furthermore, the Cancellation Division rejected the proprietor’s broad approach and held that, according to the case law (‘Aladin’/‘Aladdin’, T-126/03, July 14 2005; ‘tigha’/‘Taiga’, C-714/18 P, July 16 2020), proof of genuine use for goods within a broad specification preserves protection only for the independent subcategory actually used, whereas if the category is narrow and cannot be meaningfully subdivided, such use extends to the entire category.
Crucially, use of chocolate sauces and drizzles was found not to constitute use for confectionery, because these goods are neither included in nor identical to the category of confectionery. Their purpose and intended use is to serve as toppings or flavourings for desserts and beverages, whereas confectionery covers sweetmeats and other sugar-based goods intended to be consumed directly as such.
Next steps
The EU trademark proprietor has appealed the decision, arguing that the Cancellation Division adopted an overly restrictive interpretation of “confectionery”, maintaining that chocolate sauces, drizzles, and toppings should be regarded as confectionery because the term broadly includes sweets and chocolate, as reflected in dictionary definitions, EU food-additive guidance, and market practice.
It remains to be seen how the EUIPO Board of Appeal will rule on these issues.
