Indo European Foods Ltd (‘Indo’) filed an opposition on the basis of
Art. 8(4) EUTMR relying on a non-registered UK trade mark ‘BASMATI’ for ‘rice’. Indo argued an extended form of passing off under UK law.
The
EUIPO’s Opposition Division rejected the opposition in April 2019 and
the BoA dismissed the appeal in April 2020. Both found that Indo did not
sufficiently show that the requirements of
Art. 8(4) EUTMR would be fulfilled. Indo appealed to the General Court in 2020.
The
case was heard before the General Court in 2021, i.e. after the end of
the transition period. The EUIPO argued that Indo could not rely on the
asserted earlier UK trade mark anymore because of the end of the
transition period. For the EUIPO it followed that
(1) The opposition became devoid of purpose, and
(2) Indo did not have an interest in bringing proceedings.
The
General Court disagreed and found that the subject matter of an appeal
before it is the decision of the BoA, including the facts and law as
they were at the time the decision was rendered. In the new decision,
the BoA would have to apply the law as it was at its first decision
(case
T‑342/20; IPKat
here).
The General Court also found that the BoA’s assessment of the claim of
passing off was flawed and annulled the BoA’s decision.
The
EUIPO appealed to the CJEU, which admitted the appeal. In his Opinion on
the case, Advocate General Maciej Szpunar proposed to dismiss the
EUIPO’s appeal (IPKat
here).
The Court of Justice’s decision The CJEU dismissed the appeal.
The
judges agreed with the EUIPO insofar as the purpose of an action before
the General Court and the applicant’s interest in bringing proceedings
must continue until the decision is rendered.
Purpose of the action By
referring to its previous case law, the Court held that, unless the
BoA’s decision has been formally withdrawn, the dispute retained a
purpose. The judges did not explain what that purpose is but it can be
assumed that it is to annul or alter the BoA’s decision.
Considering
that the BoA’s decision had not been withdrawn and that the end of the
transition period had not retroactively eliminated the decision (sic!;
the CJEU does not speak of retroactively eliminating the earlier right),
the General Court was justified to hold that the action had a purpose.
Interest in the proceedings The
judges found that the General Court is entitled to raise of its own
motion and at any stage in the proceedings the objection that a party
has no interest in maintaining its action.
An interest in the
proceedings presupposes that the action is liable, if successful, to
procure an advantage for the applicant. This must be assessed in view of
all the consequences that may follow from a possible finding of
unlawfulness of the BoA’s decision and the nature of the damage
allegedly suffered by Indo.
The CJEU considered that:
(1) The purpose of the action still existed;
(2) Indo relied on an infringement of
Art. 8(4) EUTMR by the BoA rejecting its opposition; and
(3) The BoA’s decision was detrimental to Indo’s economic interest (without specifying what this interest would be).
The judges considered this to be sufficient for finding that Indo still had an interest in the proceedings.
The
arguments put forth by the EUIPO regarding the specific nature of
opposition proceedings, the essential function of a trade mark, the
principle of territoriality and the unitary character of an EU trade
mark were considered to be irrelevant. The interest in the proceedings
must not be assessed solely in the light of the legal interests
protected by the EUTMR and does not depend solely on whether there can
still be a risk of a conflict.
The Court also rejected the
EUIPO’s argument that, if Indo’s opposition were successful, the opposed
mark could be converted into national applications in all (remaining)
EU Member States. The judges referred to their previous reasoning and
found the EUIPO’s argument to have no bearing on Indo’s interest in
bringing proceedings.
Sufficient reasoning The
CJEU dismissed the EUIPO’s plea alleging insufficient reasoning of the
General Court’s finding that Indo had an interest in the proceedings.
The
judges held that the General Court’s reasoning was implicit and deemed
it sufficient to enable the parties to understand the grounds of the
judgment and to provide the Court with sufficient information to
exercise its powers of review.
Violation of Art. 72(6) EUTMR The
General Court found in the judgment under appeal that the BoA, after
the annulment of the BoA’s decision by the General Court, would have to
adopt a new decision “by reference to the situation at the time that
[the appeal before the BoA] was brought, since the action is again
pending at the same stage as it was before the contested decision” (case
T‑342/20 at para. 27).
The EUIPO considered this to infringe
Art. 72(6) EUTMR,
which requires the BoA to take the necessary measures to comply with a
judgment. According to settled case law, this provision also prevents
the EU courts from issuing orders to the BoA.
The CJEU
dismissed the EUIPO’s argument with a rather formal response. It found
that para. 27 of the General Court's judgment only dealt with the
EUIPO’s argument before the General Court that Indo had lost its
interest in the proceedings and did not impose an obligation on the BoA.
Comment 1. The CJEU’s decision does not come
as a surprise. According to its consistent case law, the General Court
may annul or alter a decision of the BoA only if, at the date on which
the BoA adopted its decision, it was vitiated by one of the grounds for
annulment or alteration mentioned in
Art. 72(2) EUTMR,
namely lack of competence, infringement of an essential procedural
requirement, infringement of the TFEU, infringement of the EUTMR or of
any rule of law relating to their application or misuse of power. The
General Court may not, however, annul or alter a decision of the BoA on
grounds which come into existence subsequent to its adoption (e.g. case
C‑482/15 P
at para. 27). Based on this case law, the CJEU found, for instance,
that the revocation of the earlier right after the BoA’s decision may
not be taken into account by the General Court (case
C‑482/15 P at paras. 28 et seqq.). The CJEU’s decision discussed above is a consistent continuation of this case law.
2.
Against this background, it is interesting to see that the CJEU
admitted the EUIPO’s appeal despite the above-mentioned case law. The
judges seemed to have had an interest in defending their case law
against the EUIPO’s arguments.
3. This is not the end of the
Brexit story. The CJEU’s judgment only concerned the question whether an
appeal before the General Court becomes inadmissible/devoid of purpose
if the earlier right ceases to have effect after the BoA decided on the
opposition proceedings.
The interesting question is: How will the BoA decide the case after the remittance? This begs two questions:
(i)
What is the relevant point in time for finding that an opposition is
well-founded? Only the application date of the contested trade mark? Or
also the date of the decision of the Opposition Division or the BoA?
This question is going to be answered in EUIPO v Nowhere (case
C-337/22 P) for opposition proceedings and in Shopify v EUIPO (case
C-751/22 P) in invalidity proceedings.
(ii) If also the decision date is decisive, is it:
(a)
The date of the BoA’s first decision (which, in the case above, was
prior to the end of the transition period; this seems to be the position
of the General Court in the contested decision); or
(b) The
second (i.e. new) decision after the case is remitted back to the BoA
following the annulment of the BoA’s first decision (which would be
after the end of the transition period)?
Stay tuned for further chapters in the ‘book of Brexit'.