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The scope of the EU General Court’s power of review of EUIPO’s assessments of the registration of EU trademarks

Court of Justice of the European Union, Case C-702/18 P, 18 June 2020

date: 26.06.2020
Area: Intellectual Property

The Court of Justice has ruled on the question of the extent to which the General Court of the European Union may take into account arguments which the parties have not put forward before EUIPO when applying for registration of an EU trade mark. The present case concerned an application for registration of a figurative sign submitted to EUIPO by a Polish company, subsequently opposed by a Spanish company on the basis of the existence of an earlier Spanish trademark in respect of which there was a likelihood of confusion within the meaning of Article 8(1)(b) of EU Regulation No 207/2009. Following the upholding of the opposition by the Board of Appeal of EUIPO, reforming the decision of the Opposition Division on the opposite side, the Polish company appealed before the EU General Court. After having had the appeal dismissed, the company brought an action before the Court of Justice, asking it to annul the decision of the EU General Court and the decision of the EUIPO Board of Appeal. Specifically, the complaint received by the ECJ contested that the EU General Court had found the arguments concerning the weak distinctive character of the earlier mark to be inadmissible, as they had been put before it for the first time. The Court of Justice, in the judgment in question, found that the EU General Court had erred in law. Indeed, according to Article 188 of the Rules of Procedure of the General Court, which governs the scope of review of decisions adopted by EUIPO, ‘[t]he pleadings lodged by the parties in the course of proceedings before the General Court may not alter the subject-matter of the dispute before the Board of Appeal’. This means, therefore, that the factors which the General Court may legitimately assess depend on the subject-matter of the dispute before EUIPO. In that regard, it is true that, according to Article 76 of Regulation No 207/2009, the examination of the facts by EUIPO is limited to the ‘arguments put forward and requests made by the parties’; however, that does not preclude the Board of Appeal from being required to rule on all the questions which, in the light of the arguments and requests put forward by the parties, appear necessary to ensure the proper application of that regulation and in respect of which the Board of Appeal has all the elements necessary to take a decision. That being so, the Court states that ‘Article 76 of Regulation No 207/2009 and Article 188 of the Rules of Procedure of the General Court cannot be interpreted as meaning that arguments intended to call into question considerations of the Board of Appeal relating to questions on which it must necessarily give a ruling do not form part of the subject-matter of the proceedings before the General Court if they have not been put forward in the course of the proceedings before the Board of Appeal’. In particular, in the context of opposition proceedings against the registration of an EU trademark, the assessment of the distinctive character of the earlier mark must be considered to be a matter of law which EUIPO is required to examine, even ex officio if necessary. Consequently, such a question must be considered as falling within the scope of the dispute before the Board of Appeal, pursuant to Article 188 of the Rules of Procedure of the General Court. Therefore, the refusal of EUIPO to examine arguments relating to the weak distinctiveness of the earlier mark, as raised for the first time before it, constitutes an error of law. If this is true, then it cannot be excluded that, in the present case, the General Court could have reached a different decision if it had found the arguments raised before it by the appellant to be admissible. On the basis of such reasoning, the ECJ annulled the judgment of the General Court.

The scope of the EU General Court’s power of review of EUIPO’s assessments of the registration of EU trademarks

Court of Justice of the European Union, Case C-702/18 P, 18 June 2020

date: 26.06.2020
Area: Intellectual Property

The Court of Justice has ruled on the question of the extent to which the General Court of the European Union may take into account arguments which the parties have not put forward before EUIPO when applying for registration of an EU trade mark. The present case concerned an application for registration of a figurative sign submitted to EUIPO by a Polish company, subsequently opposed by a Spanish company on the basis of the existence of an earlier Spanish trademark in respect of which there was a likelihood of confusion within the meaning of Article 8(1)(b) of EU Regulation No 207/2009. Following the upholding of the opposition by the Board of Appeal of EUIPO, reforming the decision of the Opposition Division on the opposite side, the Polish company appealed before the EU General Court. After having had the appeal dismissed, the company brought an action before the Court of Justice, asking it to annul the decision of the EU General Court and the decision of the EUIPO Board of Appeal. Specifically, the complaint received by the ECJ contested that the EU General Court had found the arguments concerning the weak distinctive character of the earlier mark to be inadmissible, as they had been put before it for the first time. The Court of Justice, in the judgment in question, found that the EU General Court had erred in law. Indeed, according to Article 188 of the Rules of Procedure of the General Court, which governs the scope of review of decisions adopted by EUIPO, ‘[t]he pleadings lodged by the parties in the course of proceedings before the General Court may not alter the subject-matter of the dispute before the Board of Appeal’. This means, therefore, that the factors which the General Court may legitimately assess depend on the subject-matter of the dispute before EUIPO. In that regard, it is true that, according to Article 76 of Regulation No 207/2009, the examination of the facts by EUIPO is limited to the ‘arguments put forward and requests made by the parties’; however, that does not preclude the Board of Appeal from being required to rule on all the questions which, in the light of the arguments and requests put forward by the parties, appear necessary to ensure the proper application of that regulation and in respect of which the Board of Appeal has all the elements necessary to take a decision. That being so, the Court states that ‘Article 76 of Regulation No 207/2009 and Article 188 of the Rules of Procedure of the General Court cannot be interpreted as meaning that arguments intended to call into question considerations of the Board of Appeal relating to questions on which it must necessarily give a ruling do not form part of the subject-matter of the proceedings before the General Court if they have not been put forward in the course of the proceedings before the Board of Appeal’. In particular, in the context of opposition proceedings against the registration of an EU trademark, the assessment of the distinctive character of the earlier mark must be considered to be a matter of law which EUIPO is required to examine, even ex officio if necessary. Consequently, such a question must be considered as falling within the scope of the dispute before the Board of Appeal, pursuant to Article 188 of the Rules of Procedure of the General Court. Therefore, the refusal of EUIPO to examine arguments relating to the weak distinctiveness of the earlier mark, as raised for the first time before it, constitutes an error of law. If this is true, then it cannot be excluded that, in the present case, the General Court could have reached a different decision if it had found the arguments raised before it by the appellant to be admissible. On the basis of such reasoning, the ECJ annulled the judgment of the General Court.