General Court confirms revocation of AMSTERDAM POPPERS due to lack of genuine use
- The EUIPO revoked the mark for goods in Classes 1 and 3, finding that the evidence of use related only to “poppers” in Class 5
- The court agreed that no use had been established as regards goods in Classes 1 and 3
- It dismissed the argument that the Board of Appeal had incorrectly taken the Nice Classification into account to define
the scope of protection of the mark
In a decision dated 5 March 2025 in Case T-1187/23, the General Court has dismissed the action filed by the owner of the trademark AMSTERDAM POPPERS.
Background
On 22 October 2009, Funline International Corp filed an application for registration of an EU trademark in respect of the word sign AMSTERDAM POPPERS in Classes 1 and 3. On 11 August 2021, MS Trade sro filed an application for revocation of the mark in respect of all the goods for which it had been registered on the basis of non-use (Article 58(1)(a) of Regulation 2017/1001).
By decision of 11 November 2022, the EUIPO’s Cancellation Division found that the evidence of use of the contested mark related only to stimulant inhalers (poppers), which were in Class 5, and that they did not correspond to the goods in respect of which the mark was registered. It therefore revoked the mark in respect of all the goods in Classes 1 and 3.
On 21 November 2022 Funline filed a notice of appeal with the EUIPO and submitted a second set of evidence. The Board of Appeal dismissed the appeal. More specifically, it found that the evidence showed that the sign AMSTERDAM POPPERS covered“poppers”. In that respect, the board took the view that that product did not correspond to any of the goods for which the contested mark had been registered and, consequently, it upheld the revocation of that mark in respect of all the goods covered by it.
Appeal to the General Court
Under the guise of four formal pleas in law, Funline argued that:
1. the Board of Appeal could not use the Nice Classification in order to determine the scope of protection of the contested mark; and
2. that classification is relevant only if the description of the goods covered by a mark includes a specific limitation which states the class in which those goods belong must be rejected.
General Court decision
During the proceedings before the General Court, both procedural and substantive issues arose.
Procedural issues
MS Trade raised, in essence, a plea of inadmissibility concerning the validity of the power of attorney of one of Funline’s representatives. The General Court reiterated that non-privileged parties must be represented before the courts of the EuropeanUnion by a lawyer (the person who signs the application must be a member of the Bar in order to be regarded as a lawyer for the purposes of that provision), and he or she must be authorized to practice before a court or a tribunal of a member state or of another state which is a party to the Agreement on the European Economic Area. It is not sufficient that that person is entitled to represent parties in proceedings before the courts and tribunals of a member state. Those requirements are substantive procedural requirements and failure to comply with them will render the action inadmissible. The General Court stated that the plea of inadmissibility raised by MS Trade was unfounded and must be rejected.
Funline also submitted that there were proper reasons for non-use of the contested mark and referred, in that regard, to the concept of circumstances arising independently of the will of the owner of a mark. The General Court stressed that, as Funline had not relied before EUIPO on the fact that there were proper reasons for non-use of the contested mark, it was not the court’s function to examine new pleas introduced before it or to review the facts in the light of documents adduced for the first time before it.
Substantive issues
The General Court first pointed out that, like the Board of Appeal, the court will examine whether it is clear from the evidence that the goods the marketing of which is claimed correspond to those in respect of which the contested mark has been registered. The court found that it should be also examined whether the Board of Appeal was entitled to find that the use of the contested mark to describe poppers did not make it possible to establish use in connection with the goods in respect of which that mark had been registered.
Contrary to what Funline argued, issues concerning the interpretation of the Nice Classification’s headings may still arise after registration of that mark, in particular where it is necessary to determine whether the goods marketed in connection with that mark actually correspond to those for which it was registered. In particular, where the description of the goods for which a mark is registered is so general that it may cover very different goods, it is possible to take into account, for the purposes of interpretation as a precise indication of the designation of the goods, the classes in that classification that the trademark applicant has chosen. Moreover, the fact that the description of the goods covered by a mark does not contain a specific limitation stating the class in which they belong is, in that respect, irrelevant. Accordingly, regarding the headings of the goods covered by the contested mark, the descriptions and explanatory notes to the classes should be taken into account, as they were relevant in determining the nature and purpose of the goods in question.
The evidence relating to the use of the mark AMSTERDAM POPPERS was related to poppers only as a finished product, and not as a raw material to be used in further processing. Accordingly, the Board of Appeal was right to find that no use had been established as regards the goods in Class 1.
The General Court stated that the Board of Appeal was therefore correct in finding that no use had been established as regards“soaps, perfumery, essential oils, cosmetics, intimate gels, massage oils, room scents for aphrodisiac purposes” in Class 3.
Anneli Kapp
Partner
Patendibüroo KÄOSAAR
This article first appeared in WTR Daily, part of World Trademark Review, in March/2025. For further information, please go to www.worldtrademarkreview.com.
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