The General Court of the European Union has ruled in the case T‑429/21 Aldi Einkauf SE & Co. OHG v Cantina sociale Tollo SCA.
In 2018, Cantina successfully registered an EU trademark for ALDIANO in class 33 – alcoholic beverages (excluding beers).
An invalidation proceeding followed, initiated by the German retail chain Aldi based on two earlier marks for ALDI in classes 33 and 35.
Because these earlier marks had been registered for more than 5 years, as a counter-attack, Cantina requested proof of genuine use.
EUIPO considered the invalidation request only based on one of the earlier marks, that was registered for class 35. The Office concluded that the mark’s use was dully proved by Aldi taking into account that the store sells not only foods but alcoholic beverages too. In addition, the Office found both signs similar enough.
An appeal followed where the Board of Appeal annulled the earlier decision finding the proof of use as insufficient. The earlier Aldi’s mark for class 35 covered only the general term retailing in all product areas, and there was no sufficient evidence that the mark was used for alcoholic beverages t in particular.
It must be noted that, while it is true that the Court of Justice has held that, for the purposes of registration of a trade mark covering services provided in connection with retail trade, it is not necessary to specify in detail the service or services for which that registration is sought, the applicant must, however, be required to specify the goods or types of goods to which those services relate (judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte, C‑418/02, EU:C:2005:425, paragraphs 49 and 50).
However, first, the Court has stated that the line of authority derived from that judgment concerned only applications for registration as trademarks and did not concern the protection of trademarks registered at the date of that judgment’s delivery. Since, in the present case, the earlier mark, relied on by the applicant in support of its application for a declaration of invalidity, was registered before the date of delivery of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), it was not, in any event, concerned by the obligation arising from that judgment.
Secondly, it cannot be inferred from the considerations of that judgment that, when a trademark covering retail services, registered after that judgment’s delivery – which is the case with the earlier registration – is relied on in support of a ground for invalidity referred to in Article 60(1)(a) of Regulation 2017/1001, that ground may be rejected from the outset, simply by invoking the absence of any precise statement of the goods to which the retail services covered by the earlier mark may relate.
Lastly, it must be further stated that proof of genuine use of the earlier mark and of the earlier registration is one of the ways to determine the precise goods covered by the retail services for which those goods were registered.
The Board of Appeal therefore erred in finding that it was for the very broad specification of retail trade in all product areas that the applicant had to prove genuine use of the earlier mark. That error affects the contested decision and constitutes a sufficient basis for annulling it as regards the earlier mark for the services in Class 35.