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No cactus of peace: a prickly issue of genuine use

Date: 3 January 2018

By Dr. Janet Strath and Katie Cameron


Case C-501/15 P EUIPO v Cactus SA EU:C:2017:750, 11 October 2017 


The Court of Justice of the European Union (CJEU) has dismissed an appeal brought by the European Union Intellectual Property Office (EUIPO) against a decision of the General Court in an opposition case concerning the figurative sign CACTUS OF PEACE CACTUS DE LA PAZ.


The CJEU confirmed that the General Court had been right in holding that the judgments in Case C-307/10 IP Translator EU:C:2012:361 and Case C-418/02 Praktiker Bau EU:C:2005:425 concerned only EU trade mark (EUTM) applications and not also trade marks that were already registered at the time of those judgments. Therefore those decisions would not apply retroactively to the earlier marks relied on in the opposition. The judgment also confirms that use of an 'abbreviated form' of a figurative EUTM, which omits the word element, could count as genuine use, provided that the two elements of the mark convey the same semantic meaning and do not alter the distinctive character of the trade mark in the form in which it was registered within the meaning of Article 42(2) read in conjunction with Article 15(1) of the EU Trade Mark Regulation (207/2009/EC, now replaced by 2017/1001).


The full article is available here and was first published in the Journal of Intellectual Property Law & Practice on 26 December 2017.


For questions about this matter or related issues, please contact our Partner Katie Cameron (katie.cameron@maucherjenkins.com).




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