George GRYLLOS, Legal Secretary, General Court Chambers of Judge D. Gratsias

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1 George GRYLLOS, Legal Secretary, General Court Chambers of Judge D. Gratsias 72 nd Council meeting of ECTA (Bordeaux 2016) Disclaimer: Any opinions expressed in this presentation reflect the personal views of the author.

2 Judgment of 21 July 2016 in Case C- 226/15 P Apple and Pear Australia and Star Fruits Diffusion v EUIPO Res judicata Is EUIPO bound by a judgment of a national court ruling on likelihood of confusion?

3 Registration sought for the word sign English pink as EU trade mark for Fresh fruit and vegetables

4 Opposition based on the earlier EU trade marks PINK LADY All three registered mainly for fruit, plants and trees

5 Tribunal de Commerce de Bruxelles (Commercial Court, Brussels) Action for infringement between the same parties Benelux mark ENGLISH PINK is annulled and shall not be used in the EU owing to a likelihood of confusion with the earlier EU trademarks. This judgment became final.

6 v The Opposition Division and the Board of Appeal ruled that there is no likelihood of confusion. v By judgment of 25 March 2015 [Apple and Pear Australia and Star Fruits Diffusion v OHIM Carolus C. (English pink), T- 378/13, EU:T:2015:186] the General Court ruled that the instances of EUIPO were not bound by the res judicata of the judgment of the Tribunal de Commerce de Bruxelles.

7 Art. 56(3) Reg. 207/2009 An application for revocation or for a declaration of invalidity shall be inadmissible if an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on by a court in a Member State and has acquired the authority of a final decision. NB: Version before amendment by Reg. 2015/2424.

8 The judgment of the ECJ on appeal v No provision of Reg. 207/2009 envisages the interplay between an infringement action before an EU trade mark court concerning an earlier EU trade mark and a national trade mark on the one hand, and opposition proceedings before EUIPO invoking the same earlier EU trade mark and the same sign as the national trade mark for which registration is sought on the EU level, on the other. (para. 48)

9 The judgment of the ECJ on appeal v In the light of the exclusive competence of EUIPO s adjudicating bodies to authorise or refuse the registration of an EU trade mark, the subject matter of any proceedings before EUIPO relating to registration of an EU trade mark or opposition to that registration necessarily is different to any proceedings before a national court, even where that court acts as an EU trade marks court. (para. 62) v Conclusion: EUIPO is not bound by the res judicata produced through the judgment of the Tribunal de Commerce de Bruxelles

10 Outstanding issues v According to paragraph 60 of the judgment of the ECJ, the Tribunal de commerce de Bruxelles did not simply prohibit the use of English Pink as a Benelux mark in the EU, but ordered the owner of said mark to refrain from using English Pink as a sign in general in the EU. v Art. 36(1) Reg. 1215/2012: A judgment given in a Member State shall be recognised in the other Member States without any special procedure being required. v What is the effectiveness of the registration of a sign as EU trade mark in such circumstances?

11 Outstanding issues v Is an EU trade mark depositor in good faith [art. 52(1)(b) of Reg. 207/2009] when he/she seeks registration as EU trade mark of a sign they know they cannot use in the EU owing to a judgment that has become final? v In order to assess whether a depositor is acting in bad faith, it is necessary inter alia to examine whether he intends to use the mark applied for. v The intention of the applicant is normally established by reference to objective criteria, including, in particular, the commercial logic underlying the filing of the application for registration. [judgment of 7 July 2016, Copernicus- Trademarks v EUIPO Maquet (LUCEO), T- 82/14, EU:T:2016:396, paras 29 and 31].

12 An attempted answer v Following the decision of the Board of Appeal and the judgments of the General Court ruling that there is no likelihood of confusion and of the Court of Justice dismissing the appeal, a Court of a Member- State shall not make a finding premissed on the opposite scenario i.e. that there is a likelihood of confusion (judgment of 14 December 2000, Masterfoods and HB, C- 344/98, EU:C:2000:689). v Consequently, a national court can no longer prohibit the use of the EU trade mark on the basis of res judicata produced by the judgment of the Tribunal de Commerce de Bruxelles. v Subject to the correctness of such reasoning, the depositor could also claim being in good faith as to the prospects of use of the EU trade mark despite the earlier decision of the national court.

13 Judgment of 18 March 2016 in Case T- 501/13 Karl- May- Verlag v OHIM Constantin Film Produktion (WINNETOU) Res judicata Is EUIPO bound by a judgment of a national court ruling on the descriptive character of a sign?

14 Registration sought for the word sign WINNETOU For goods and services in 15 Classes v Application for declaration of invalidity on absolute grounds for refusal [art. 52(1)(a) & art. 7 of Reg. 207/2009]. v The Cancellation Division rejected the application. v The Board of Appeal reversed.

15 The Board of Appeal v Winnetou was the main character in a series of novels by the author Karl May, and the protagonist of films, and radio or theatre plays. According to the judgments of the Bundesgerichtshof and the Bundespatentgericht, the German consumer understands the term winnetou to refer to a fictional, noble and good Native American chieftain and, according to the Bundesgerichtshof, in Germany, it was descriptive of the printed matter, the film production, publishing of books and magazines. v In this case, in so far as a higher national court had ruled that the term winnetou was descriptive in Germany, the contested mark had to be also regarded as ineligible for protection under art. 7(2) of Reg. 207/2009 in respect of goods and services connected to books, radio and television.

16 The Judgment of the General Court v The registrability of a sign as an EU trade mark is to be assessed on the basis of the relevant EU rules alone, as interpreted by the judicature of the European Union. [ ] [EUIPO] is accordingly not bound by decisions adopted in the Member States, even in a situation where those decisions were adopted under harmonised national legislation. (para 35) v The General Court is not bound by such decisions either. (para 37) v A formal declaration that the Board of Appeal is not bound by a national decision is not enough, if the Board of Appeal does not carry out an independent assessment in the light of the arguments and evidence submitted by the parties. (paras 38-40).

17 The Judgment of the General Court v Although the Board of Appeal had to consider the decisions of the German courts regarding the sign WINNETOU and consider with particular care whether it should adjudicate in the same way or not, it could not take the view that it was bound by those decisions. (para 45)

18 Judgment of 9 September 2016, in Case T- 159/15 Puma v EUIPO Gemma Group (Representation of a bounding feline) Proof of the reputation of the earlier mark What are the obligations of a BoA with regard to facts deemed established by earlier decisions?

207/2009 opposition based on the earlier international

19 Registration sought for the figurative sign For goods and services in Class 7 (processing machines) Art. 8(5) of Reg. 207/2009 opposition based on the earlier international figurative marks For goods in 3 Classes (clothing, footwear, bags, toys etc.)

20 v The Opposition division rejected the opposition. v The Board of Appeal rejected the evidence relating to the reputation of the earlier mark and dismissed the appeal. The Board of Appeal considered inter alia that it was not bound by three earlier decisions of the Opposition Division having concluded that the earlier trade marks had acquired a substantial reputation through use and enjoyed a high degree of distinctiveness as a result of their long standing and intensive use and high degree of recognition.

21 The judgment of the General Court v The earlier marks have been found to have a reputation by EUIPO in three recent decisions. Those decisions concerned the same earlier marks, goods which are identical or similar to those at issue and some of the Member States concerned in the present case. (para 33) v The finding that the earlier marks have a reputation is a finding of a factual nature which does not depend on the mark applied for. (para 33) v The Board of Appeal could not depart from EUIPO s decision- making practice without providing the slightest explanation regarding the reasons which led it to take the view that the factual findings in respect of the reputation of the earlier marks, which were made in those decisions, would not, or would no longer, be relevant. (para 34)

22 The judgment of the General Court v Even if none of those previous decisions were accompanied by the evidence of the earlier marks reputation which had been submitted in the context of those proceedings, the Board of Appeal should, in accordance with the principle of sound administration, have either requested that the applicant submit supplementary evidence of the reputation of the earlier marks if only to rebut it, as the third subparagraph of Rule 50(1) of Reg. 2868/95 enabled it to do, or provided the reasons why the findings made in those previous decisions as regards the reputation of the earlier marks had to be discounted in the present case. (paras 35-37)

23 Judgment of 22 June 2016, in Case C- 207/15 P Nissan Jidosha v EUIPO Requests for renewal of EU trade mark Is it possible to renew registration of a trade mark in two phases?

24 Art. 47(3) Reg. 207/2009 The request for renewal shall be submitted in the six- month period prior to the expiry of the registration. [ ] Failing this, the request may be submitted and the fees paid within a further period of six months following the expiry of registration, provided that an additional fee for late payment of the renewal fee [ ] is paid within this further period.

Figurative trade mark Was registered for goods in Classes 7, 9 and 12 v Nissan requested its renewal for goods in classes 7 and 12 v Subsequently, within the

25 Figurative trade mark Was registered for goods in Classes 7, 9 and 12 v Nissan requested its renewal for goods in classes 7 and 12 v Subsequently, within the further 6- month period, Nissan asked EUIPO to include the Class 9 goods in the renewal of that mark. v The Administration of Trade Marks Division refused the request.

26 The decision of the Board of Appeal v The request for renewal of the mark at issue in respect of the goods in Classes 7 and 12 constituted a surrender of that mark, for the purposes of Art. 50 of Reg. 207/2009, as regards the goods in Class 9. v For reasons of legal certainty, the EU trade mark proprietor could not be allowed to reverse its decision not to renew the mark at issue in respect of certain goods. The judgment of the General Court v The Board of Appeal erred in qualifying the partial renewal as surrender for the remainder. v However, the EU trade mark proprietor could not request renewal in two phases.

27 The judgment of the ECJ on appeal v The wording of the third sentence of Art. 47(3) of Reg. 207/2009 in [various] language versions suggests that the EU legislature made the submission of a request for renewal of an EU trade mark during the further period conditional only upon the payment of an additional fee, which constitutes the only factor enabling a request for renewal lodged in those circumstances to be distinguished from a request submitted within the initial six- month period. (para 48) v It is not apparent from Art. 47 of Reg. 207/2009, that the submission of requests for renewal of an EU trade mark, staggered over time and relating to different classes of goods or services, is prohibited. (para 51)

28 The judgment of the Court v Reg. 207/2009 aims, in view of the economic importance of the protection conferred by EU trade marks, to facilitate the retention by the proprietors of those trade marks of their exclusive rights. (para 53) v The principle of legal certainty does not imply that it is impossible for EUIPO to envisage, when registering a request for renewal submitted prior to the expiry of the further 6- month period, information measures that would enable both the rights of proprietors of EU trade marks and the rights of third parties to be safeguarded, instead of the removal of certain classes of goods or services from the register. (para 57)

29 Judgment of 8 June 2016, in Case T- 583/15 Monster Energy Company v EUIPO Restitutio in integrum Does Art. 81(1) of Reg. 207/2009 apply to the time- limit for bringing an action against a decision of a BoA before the General Court?

30 Art. 81(1) Reg. 207/2009 The applicant for or proprietor of an EU trade mark or any other party to proceedings before the Office who, in spite of all due care required by the circumstances having been taken, was unable to comply with a time limit vis- à- vis the Office shall, upon application, have his rights re- established if the obstacle to compliance has the direct consequence, by virtue of the provisions of this Regulation, of causing the loss of any right or means of redress.

Request for registration of as EU trade mark was dismissed by the BoA on 11 December 2013 v On 18 August 2014 the applicant filed a request for restitutio in

31 Request for registration of as EU trade mark was dismissed by the BoA on 11 December 2013 v On 18 August 2014 the applicant filed a request for restitutio in integrum pursuant to art. 81(1) of Reg. 207/2009. v The BoA dismissed as inadmissible the appeal against the letter of the registry of the BoA refusing the request.

32 The judgment of the General Court v To acknowledge that [a department of EUIPO] has the power to grant an application for restitutio in integrum as regards a time limit for bringing an action before the General Court would mean encroaching upon the jurisdiction of that court, which is the only court, subject to review by the Court of Justice, which may assess whether a case which has been brought before it is admissible, in accordance with Articles 256 and 263 TFEU. (para 41) v Art. 65(5) of Reg. 207/2009 states that an action brought against a decision of a Board of Appeal is to be brought before the Court of Justice within two months of the date of notification of the decision of the Board of Appeal. (para 43)

33 The judgment of the General Court v It is not therefore Art. 81 of Reg. 207/2009 relating to restitutio in integrum which applies in circumstances where an action brought before the General Court against a decision of a Board of Appeal of EUIPO may be regarded as out of time by the Court, but the provisions applicable to the Court, namely, in addition to Article 263 TFEU, the second paragraph of Article 45 of the Statute of the Court of Justice of the European Union, according to which no right shall be prejudiced in consequence of the expiry of a time limit if the party concerned proves the existence of unforeseeable circumstances or of force majeure.

COPERNICUS-TRADEMARKS LTD v OFFICE FOR HARMONISATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) (OHIM), MAQUET SAS

856 COPERNICUS-TRADEMARKS LTD v OFFICE FOR HARMONISATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) (OHIM), MAQUET SAS General Court of the European Union (Ninth Chamber) Case T-186/12 G. Berardis