Denmark lost a dispute regarding Feta cheese produced only for export from the territory of the EU

The European Court has ruled in the case C‑159/20 the European Commission v the Kingdom of Denmark which closed the door to one of the few misunderstandings regarding the scope of geographical indication protection in the EU.

In the case at hand, Greek complained before the Commission that cheese manufacturers from Denmark use the protected geographical indication Feta by labeling their products as ‘Danish Feta’ and ‘Danish Feta cheese’. Denmark refused to prohibit such use on its territory stating that the production was only for export purposes not for sale on the territory of the EU. According to the Kingdom, this type of GI use was not prohibited by the EY Regulations.

The European Commission disagreed and initiated a lawsuit against Denmark. The Advocate General issued its opinion that reasonings are now upheld by the Court.

According to the Court’s decision:

Recital 18 of Regulation No. 11512012 states that the specific objectives of PDO and PGI protection are to ensure fair income for farmers and producers according to the qualities and characteristics of a given product or its production method and to provide clear information about products with specific characteristics related to geographic origin, thereby enabling consumers to make more informed purchasing choices.

In addition, it follows from the Court’s practice that the purpose of the PDO and PGI protection system is mainly to guarantee consumers that agricultural products bearing a registered name have certain specific characteristics due to their origin in a certain geographical area and therefore provide a guarantee of quality due to their geographical origin in order to allow agricultural operators who have made a genuine effort to improve quality to receive higher incomes in return and to prevent third parties from unfairly benefiting from the reputation, related to the quality of those products (judgments of 17 December 2020, Syndicat interprofessional de défense du Fromage Morbier, C‑490/19, EU:C:2020:1043, paragraph 35 and the case-law cited and by the analogy of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 49).

Since the Kingdom of Denmark points out that it follows from these objectives that Regulation No 1151/2012 is aimed at introducing a system of protection of PDOs and PGIs for products placed on the internal market because the said users are those in the Union, it should be noted that this regulation clearly applies to these users and not to users in third countries. Indeed, that regulation, adopted on the basis of Article 118 TFEU, concerns the functioning of the internal market and, as that Member State points out, is aimed at the integrity of the internal market and consumer information in the Union.

It should also be noted that the objective of informing consumers and the objective of guaranteeing a fair income for producers in accordance with the qualities of their products are interrelated, since informing consumers is aimed in particular, as is clear from the case law, at this to allow agricultural operators who have made real efforts to improve quality to receive higher incomes in return.

However, as follows from recital 18 and from Article 4(a) of Regulation No 1151/2012, the objective of guaranteeing fair income to producers in accordance with the qualities of their products is itself an objective pursued by that regulation. This also applies to the purpose of ensuring the respect of intellectual property rights enshrined in Article 1, letter c) of this Regulation.

It is clear, however, that the use of the PDO ‘Feta’ to designate products produced in the territory of the Union which do not comply with the product specification of that PDO affects the two stated objectives, even if those products are intended for export to third countries.

Finally, as regards compliance with the principle of legal certainty, it should be noted that, undoubtedly, Regulation No. 1151/2012 does not explicitly state that it also applies to products produced in the Union for the purpose of export to third countries. However, in view in particular of the general and unequivocal nature of Articles 13, 36, and 37 of Regulation No 1151/2012, which do not provide for an exception to such products, and the fact that the said objectives are clearly stated in Articles 1 and 4 of that Regulation, Article 13(3) thereof appears clear and unequivocal in so far as it obliges Member States to take appropriate administrative and judicial measures to prevent or suspend the use of a PDO or a PGI to designate products produced on their territory that do not comply of the applicable product specification, including where these products are intended for export to third countries.

Based on the stated considerations, the Court decided:

By failing to prevent or stop the use by Danish milk producers of the Protected Designation of Origin (PDO) ‘Feta’ to designate cheese that does not comply with the product specification of that PDO, the Kingdom of Denmark has failed to fulfill its obligations under Article 13(3) of Regulation (EU) No. 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs.

(unofficial translation)

Which party bears the burden to prove genuine use of a trademark? – an EU Court decision

The European Court has ruled in case C‑183/21 Maxxus Group GmbH & Co. KG v Globus Holding GmbH & Co. KG.

The case, which poses the question of who bears the burden to prove genuine use of a trademark, has the following background:

Under Paragraph 49(1) of the Law on the protection of trademarks and other signs) of 25 October 1994 (BGBl. 1994 I, p. 3082, the registration of a trademark is, upon application, to be cancelled on the ground of revocation if the trademark has not been used within a continuous period of five years.

Under Paragraph 55(2)(1) of that law, any person may bring an action pursuant to Paragraph 49 thereof for a declaration of revocation of a trademark in so far as he or she pleads non-use of that mark.

The facts giving rise to the dispute in the main proceedings and the question referred for a preliminary ruling

Globus is the proprietor of the word mark MAXUS. That mark was registered in July 1996 at the German Patent and Trade Mark Office, Germany for a number of goods in Classes 1 to 9 and 11 to 34.

In addition, Globus is the proprietor of the following figurative mark, registered at the German Patent and Trade Mark Office in May 1996 for goods in Classes 1 to 9 and 11 to 34:

On 28 November 2019, Maxxus brought before the Regional Court, Saarbrücken, Germany, which is the referring court, an action seeking, in essence, a declaration revoking Globus’s trademarks referred to in paragraphs 13 and 14 of the present judgment on the ground of non-use.

In support of its application, Maxxus submits that over the past five years Globus did not make a use of those trademarks that is such as to preserve its rights over them. Maxxus states that it has searched online, including on Globus’s website, and that those searches have provided no indication of such use. If the term ‘MAXUS’ is entered in the internal search tool on Globus’s website, two results are displayed, which refer to a beverage store in Germany operated by a company connected to Globus. However, it is apparent from research on the internet that the beverages sold by that company bear not the trademark MAXUS, but other marks of third-party manufacturers. That was confirmed by investigations carried out in the store in question by a detective agency instructed by Maxxus.

Globus disputes those contentions and maintains that it has made a use of the two trademarks at issue that is such as to preserve its rights over them.

The referring court points out that, in the context of proceedings for revocation of a trademark for non-use, under the case-law of the Bundesgerichtshof (Federal Court of Justice, Germany) a distinction is to be drawn between the burden of setting out the facts (Darlegungslast) and the burden of proof. As regards the setting out of the facts, it is incumbent upon the applicant to set out, in a substantiated manner, the matters intended to show non-use of the trademark. For that purpose, it should, using its own resources, conduct an investigation to ascertain whether the proprietor used the mark concerned in such a way as to preserve its rights. Since the applicant does not, generally, have knowledge of the business processes of the proprietor of the mark, the proprietor could then bear a ‘secondary’ burden of setting out the facts. As to the burden of proof in respect of non-use, that burden rests on the applicant.

The referring court observes that, following the judgment of 22 October 2020, Ferrari (C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 82), in which the Court of Justice ruled that the burden of proof that a trade mark has been put to ‘genuine use’, within the meaning of Article 12(1) of Directive 2008/95, rests on the proprietor of that mark, the abovementioned case-law of the Bundesgerichtshof (Federal Court of Justice) relating to the burden of proof is no longer tenable. It considers, however, that the question whether national law may continue to place the burden of setting out the facts on the applicant remains unresolved. In its view, that question must be answered in the affirmative.

In that regard, the referring court provides explanation of the distinction drawn in German law between the burden of setting out the facts and the burden of proof. The burden of setting out the facts requires a party to be as concrete as possible in its submissions, at the risk of losing the case if it does not fulfill that obligation. German procedural law also imposes on the defendant a secondary burden of setting out the facts. Each of the parties is required to carry out investigations in their own sphere of activity. Those various burdens and obligations are separate from the burden of proof. The burden of setting out the facts differs from the burden of proof in that each party must present submissions concerning the facts that are known to it or can be researched with reasonable effort.

The referring court takes the view that EU law, and, in particular, Directive 2015/2436, do not preclude the burden of setting out the facts from being placed on the party that applies for revocation of a trademark for non-use. That burden may be justified by a weighing up of the interests of the parties concerned. In proceedings for revocation of a trademark for non-use, it is incumbent upon the applicant to verify, to the extent possible, whether the defendant has put its mark to genuine use. It is only after such an investigation has been conducted and its results set out that the defendant is to be required to reveal the use that it has made of its mark. Since no specific legal interest in bringing proceedings is required in order to apply for revocation of a trademark for non-use, any person might require the proprietor to disclose the use that it makes of its mark, entailing a serious risk of proceedings being brought that constitute an abuse. The applicant could require the proprietor of the mark concerned to give up trade secrets and to make considerable efforts in the research necessary to demonstrate genuine use of its mark.

Since Directive 2015/2436 does not govern the national procedure relating to an application for revocation of a trademark for non-use, the referring court takes the view that the judgment of 22 October 2020, Ferrari (C‑720/18 and C‑721/18, EU:C:2020:854), does not preclude the applicant from bearing a burden of setting out the facts as contemplated by that court.

It was in those circumstances that the Regional Court, Saarbrücken decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Is EU law, in particular with regard to [Directive 2008/95], in particular in Article 12, and Directive [2015/2436], in particular in Articles 16, 17 and 19, to be interpreted as meaning that the effet utile of those provisions prohibits an interpretation of national procedural law which:

(a)  imposes on the applicant in civil proceedings for cancellation of a nationally registered trademark on grounds of revocation for non-use a burden of setting out the facts, as distinguished from the burden of proof; and

(b)  requires the applicant, in the context of that burden of setting out the facts,

–   to make, in such proceedings, substantiated submissions regarding the defendant’s non-use of the trademark, to the extent that it is possible for the applicant to do so; and

–  to carry out, for that purpose, its own research into the market, in a manner which is appropriate to the request for cancellation and to the specific nature of the trademark concerned?’

The EU Court’s position:

Article 19 of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks must be interpreted as precluding a procedural rule of a Member State which, in proceedings concerning an application for revocation of a trademark for non-use, requires the applicant to carry out market research concerning the possible use of that mark by its proprietor and to make in that regard, to the extent possible, substantiated submissions in support of its application.

Pirelli won a tyre dispute in the EU

The European Court has ruled recently on joined cases C‑818/18 P и C‑6/19 P The Yokohama Rubber Co. Ltd v Pirelli Tyre SpA.

The dispute at hand concerns the following figurative European trademark registered by Pirelli in 2001 for class 12 – tyres, solid, semi-pneumatic and pneumatic tyres, rims and covers for vehicle wheels of all kinds, vehicle wheels of all kinds, inner tubes, wheel rims, parts, accessories and spare parts for vehicle wheels of all kinds“:

On 27 September 2012, Yokohama filed before EUIPO an application for a declaration of invalidity of the mark at issue for the goods ‘Tyres, solid, semi-pneumatic and pneumatic tyres for vehicle wheels of all kinds’, based on Article 52(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(b) or Article 7(1)(e)(ii) of that regulation.

By decision of 28 August 2014, the Cancellation Division of EUIPO declared the mark at issue invalid for those goods, as well as for ‘rims and covers for vehicle wheels of all kinds’, on the ground that the mark at issue consisted exclusively of the shape of the goods concerned necessary to obtain a technical result within the meaning of Article 7(1)(e)(ii) of Regulation No 40/94.

Pirelli filed a notice of appeal against that decision with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009.

The Fifth Board of Appeal of EUIPO upheld the appeal in part, annulling the decision of the Cancellation Division in so far as it had declared the mark at issue invalid for ‘rims and covers for vehicle wheels of all kinds’. It dismissed the appeal as to the remainder, thus confirming the invalidity of the mark at issue in respect of ‘Tyres, solid, semi-pneumatic and pneumatic tyres for vehicle wheels of all kinds’.

The decision was appealed before the General Court of the EU.

The Court overturned it concluding that the sign at hand does not perform any technical functions. The reason for this is that the mark represents only a single groove of a tyre tread and just alone it cannot has technical function. In order such a function to be achieved other elements from the tyre are necessary. What’s more the groove represents one very small part of the entire tyre.

The European Court upheld this position. Nevertheless the Court highlighted that the scope of protection of the above mark is quite limited. Other manufacturers can use similar grooves if they are part of tyres with different overall shapes.

When a letter combination can create trademark problems – an EU Court decision

The European Court has ruled in case T‑860/19, Alkemie Group sp. z o.o срещу Mann & Schröder GmbH.

This dispute concerns a European trademark application for the following classes:

  • Class 3: “Cosmetics, cosmetic preparations for skin care, creams for cosmetic use, cosmetic milks, essential oils, lotions, balms, liquids, gels, washing products, shampoos”;
  • Class 5: ‘Cosmetic products with therapeutic action: curative balms, curative creams, curative essential oils, curative ointments, curative balms, curative tonics, curative lotions for skin care, curative aerosols, curative hair lotions, curative powders for babies, oils medicinal for infants, healing creams for children, impregnated medicinal wipes for hygiene; hygiene products for medical purposes, antibacterial healing preparations for washing the skin, medicinal skin lotions; healing gels for hygiene of the oral cavity and fluids for rinsing the mouth, medicinal preparations for skin treatment; food accessories; hygienic products’;
  • Class 35: ‘Retail services, wholesale services, internet sales and mail order services for the following goods: cosmetics, cosmetic preparations for skin care, cosmetic creams, toilet milks, essential oils, lotions, balms, liquids, gels, washing preparations, shampoos, cosmetic products for therapeutic use, food supplements, hygiene products, clothing, bedding [linen], toys, children’s furniture; advertising and marketing; services relating to the presentation of goods; organization of participation in fairs and exhibitions ”.

Against this application an opposition was filed by Mann & Schröder GmbH based on early registered trademark for ALKMENE in the following classes:

  • Class 3: “Cosmetics, cosmetic preparations for skin care, creams for cosmetic use, cosmetic milks, essential oils, lotions, balms, liquids, gels, washing products, shampoos”;
  • Class 5: ‘Cosmetic products with therapeutic action: curative balms, curative creams, curative essential oils, curative ointments, curative balms, curative tonics, curative lotions for skin care, curative aerosols, curative hair lotions, curative powders for babies, oils medicinal for infants, healing creams for children, impregnated medicinal wipes for hygiene; hygiene products for medical purposes, antibacterial healing preparations for washing the skin, medicinal skin lotions; healing gels for hygiene of the oral cavity and fluids for rinsing the mouth, medicinal preparations for skin treatment; food accessories; hygienic products’;
  • Class 35: ‘Retail services, wholesale services, internet sales and mail order services for the following goods: cosmetics, cosmetic preparations for skin care, cosmetic creams, toilet milks, essential oils, lotions, balms, liquids, gels, washing products, shampoos ”.

The EUIPO upheld the opposition finding both sign as confusingly similar for the consumers in the EU. The decision was appealed.

According the the applicant both marks were not similar because their first part ALK had been widely used in many other registered trademarks, which in turn meant that this letter combination was not distinctive.

The Court disagreed. The fact that other trademarks cover the same letters combination doesn’t mean that it is not distinctive. Such an assumption has to be proved by particular evidence that to show low distinctive character of the combination in relation the the particular goods and services. This didn’t happen in the case at hand.

The Court pointed out that when word mark is compared with combined one, the word part has a dominant position in most of the cases.

From that perspective, the Court considered that there is a similarity between both marks. This was due to their identical beginnings as well as to their identical length and similarity from visual and phonetic point of view.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB.

To what extent decorative signs can be trademarks – an EU Court decision

The European Court has ruled in case C‑456/19 Aktiebolaget Östgötatrafiken v Patent- och registreringsverket.

This case concerns a dispute from Sweden with the following background:

The appellant in the main proceedings is the proprietor of figurative marks registered at the PRV under Nos 363521 to 363523 for services provided by means of vehicles and transport services falling within Class 39 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.

Those figurative marks are represented as follows:

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On 23 November 2016, the appellant in the main proceedings filed three trade mark applications with the PRV for various services provided by means of vehicles and transport services falling within Class 39 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

Those three applications were accompanied by the following description: ‘Colouring of vehicles in the colours red, white and orange, as shown’. The appellant in the main proceedings also specified that those applications did not concern the actual shape of the vehicles or the fields of the colour black or grey covering that shape.

By a decision of 29 August 2017, the PRV rejected those applications on the ground that the signs for which registration was sought under trade mark law were merely decorative, that they could not be perceived as signs capable of distinguishing the services covered by those applications and that they were therefore devoid of distinctive character.

The appellant in the main proceedings challenged that decision before the Patent- och marknadsdomstolen (Patents and Market Court, Sweden).

In support of its action, it stated that the marks applied for constituted ‘position marks’, consisting of ellipses of different sizes and in the colours red, orange and white, with a specific size and placed in a specific position on buses and trains used for the provision of transport services.

It provided the following images of the marks applied for, showing the outlines of the vehicles in dotted lines in order to make it clear that the protection applied for does not concern the shape of those vehicles:

The appellant in the main proceedings also submitted that the marks applied for created an impression comparable to that created by the marks registered under N 363521 to 363523 and that the distinctive character of the former should not be assessed differently solely on the ground that they were intended to be placed in a specific manner on the vehicles used for the transport service. More generally, it added that the various transport companies affix their own graphics or colouring to their vehicles, so that users of the services which they provide regard those graphics or colourings as indicators of commercial origin.

The PRV, for its part, argued that protection of the figurative elements of the marks at issue in the main proceedings was sought not in an abstract manner but in order to have those figurative elements appear on the vehicles used by the appellant in the main proceedings. Since the assessment of distinctive character must be carried out as a whole and since commercial transport vehicles are often decorated with coloured motifs, consumers would have to have familiarised themselves with such elements beforehand in order to regard them as a trade mark, failing which they would regard them as decorative elements. In view of the diversity in the colouring and decoration of the transport vehicles used in the economic sector concerned, the signs at issue in the main proceedings could be perceived as an indication of commercial origin only if they differed sufficiently from the norm or customs in the sector, which is not the case.

By judgment of 29 March 2018, the Patents and Market Court dismissed the action brought by the appellant in the main proceedings on the ground that the evidence adduced did not suffice for a conclusion that the colours and shape of the signs for which protection under trade mark law was sought departed to such an extent from the manner in which other undertakings decorate their vehicles, with the result that the view could not be taken that those signs are perceived by the relevant public as an indication of commercial origin.

The appellant in the main proceedings appealed against that judgment to the Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm, Sweden.

That court notes that the fundamental requirement laid down in Article 3 of Directive 2015/2436 is that, in order to be a trade mark, a sign must be distinctive.

In that regard, it points out that, in accordance with the settled case-law of the Court, the perception of the distinctive character of a sign by the relevant public is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the product itself as it is in relation to a word or figurative mark. Indeed, since average consumers are not in the habit of presuming the origin of goods on the basis of their shape or that of their packaging, it may be more difficult to establish the distinctive character of a three-dimensional mark than that of a word or figurative mark. That is why, as the Court has held, a sign which is indistinguishable from the appearance of the product can be regarded as having distinctive character only if it departs significantly from the norm or customs of the economic sector concerned.

As regards a trade mark designating a service, the referring court states that the Court, in paragraph 20 of its judgment of 10 July 2014, Apple (C‑421/13, EU:C:2014:2070), held that the layout of a retail store can also be capable of distinguishing the products or services of one undertaking from those of other undertakings when the depicted layout departs significantly from the norm or customs of the economic sector concerned.

The referring court observes, however, that, in that judgment, the Court did not specify the conditions under which the requirement for a significant departure from the norm or customs of the sector must be applied in respect of a mark designating a service.

Moreover, it points out that, in that same judgment, the Court did not examine whether the mark at issue was not independent of the appearance of the material objects which enabled performance of the services in respect of which that mark had been registered.

Thus, the national court entertains doubts regarding whether, for an assessment of the distinctive character of signs intended to be affixed to certain parts of the vehicles of a provider of transport services in order to distinguish that provider, such signs must depart significantly from the norm or customs of the economic sector concerned.

In those circumstances, the Svea hovrätt, Patent- och marknadsöverdomstolen (Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm), decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

(1)  Must Article 4(1)(b) of [Directive 2015/2436] be interpreted as meaning that, in the case of an application for registration of a trade mark which designates services and where the application relates to a sign, placed in a particular position, which covers large areas of the physical objects used to perform the services, it must be assessed whether the mark is not independent of the appearance of the objects concerned?

(2) If the first question is answered in the affirmative, is it necessary for the trade mark to depart significantly from the norm or customs of the economic sector concerned in order for the mark to be regarded as having distinctive character?

The Court’s decision:

Article 3(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that the distinctive character of a sign for which registration as a trade mark in respect of a service is sought, which sign is composed of coloured motifs and which is intended to be affixed exclusively and systematically in a specific manner to a large part of the goods used for the provision of that service, must be assessed by taking into account the perception of the relevant public of the affixing of that sign to those goods, without it being necessary to examine whether that sign departs significantly from the norm or customs of the economic sector concerned.

Lionel Messi is so famous that he doesn’t need to prove it – a decision by the European Court

The European Court has issued its decision in the case – 449/18 P EUIPO v Messi Cuccittini and C-474/18 P J.M.-E.V. e hijos v Messi Cuccittini.

This dispute concerns an attempt by one of the most famous footballer in the world for all time Lionel Messi to register the following European trademark in 2011 for clothes and shoes:

Against this application an opposition was filed by a Spanish company based on early registered trademark for MASSI for the same goods.

The EUIPO upheld the opposition finding both signs similar. From phonetic and visual point of view they are very similar due to the one letter difference.

From conceptual side, the fact that the word Messi refers the the well-known footballer Lionel Messi was not enough to overcome the similarity because only part of the consumers are interested in the football as a sport.

The decision was appealed. The General Court of the EU annulled it entirely.

According to the Court, both marks are not similar and the reason for this conclusion is that MESSI is a word that consumers will automatically refer to the particular footballer. This will make the necessary difference due to which a confusing between the signs is not possible.

The EUIPO retorted that the footballer didn’t claim any reputation in the initial proceeding and there were no evidence submitted in that regard. That’s why the Office didn’t take into account this fact, the official procedure requires reputation to be proved.

The Court clarified that some publicly well-known facts have to be considered by the Office without they to be proved. In the case at hand the footballer reputation is such a fact.

Although this decision is logical it arises some question.

It is a fact that Leonel Messi is very famous as a whole. But is is a fact that brands such as CoCa Cola, Nike, Apple are so famous as well.

From that perspective is this decision means that such brands don’t have to prove their reputation in disputes before the EUIPO any more.

And what about the McDonald’s case from the last year when the company lost its EU trademark for Big Mac due to insufficient evidence for acquired reputation provided in the procedure. The fact is that most of the people regard Big Mac as a product by McDonald’s.

It will be interesting to what extent this decision by the European Court will reflect the future practice of the EUIPO and all national Patent Offices in the EU.

Source: IPKat.

Formula E crashed in a case before the European Court of Justice

race-track-flag-2035566_960_720.jpgThe European Court has ruled in case C‑282/18 – The Green Effort Limited v Fédération internationale de l’automobile (FIA). Even though the case is simple, it clearly shows why every trademark owner has to stick to the deadlines given by the EUIPO.

The Case concerns the following:

The Green Effort acquired rights over the word mark Formula E, the application for registration of which was filed on 17 November 2010.

The goods and services in respect of which registration was sought are:

–        Class 25: ‘Clothing’;

–        Class 38: ‘Broadcasting by radio, television and satellite’;

–        Class 41: ‘Organization of sporting events’.

The EU trademark application was published on 3 December 2010 and the trade mark applied for was registered on 14 March 2011.

On 15 March 2016, Fédération internationale de l’automobile (FIA) filed an application for revocation of the contested mark for all the goods and services, pursuant to Article 51(1)(a) of Regulation No 207/2009, now Article 58(1)(a) of Regulation 2017/1001, on the ground that it had not been put to genuine use within a continuous period of five years.

On 21 March 2016, the Cancellation Division of EUIPO invited The Green Effort to submit, by 21 June 2016, proof of genuine use of the contested mark. Since that proof was submitted on 22 June 2016, in disregard of the time limit prescribed, it was not taken into account.

On 27 July 2016, The Green Effort filed an application for restitutio in integrum with the Cancellation Division of EUIPO in order have its rights to submit that proof re-established.

By decision of 8 September 2016, the Cancellation Division rejected the application and revoked the contested mark in its entirety.

On 5 October 2016, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.

By the contested decision, the Second Board of Appeal of EUIPO (‘the Board of Appeal’) dismissed the appeal.

In support of its decision, the Board of Appeal considered that neither the proprietor of the contested mark nor its representative showed that they had actually taken the utmost care to observe the time limit prescribed for submitting the documents proving genuine use of the contested mark. It took the view that, while there is evidence in the file of repeated attempts to send electronic communications and fax communications from The Green Effort to EUIPO, with respect to Spanish local time all communications were received on 22 June 2016, that is to say after the time limit prescribed had expired, since the explanations provided in that regard could not be regarded as ‘exceptional’.

Therefore, the Board of Appeal upheld the decision of the Cancellation Division to reject the application for restitutio in integrum, and, with regard to the application for revocation of the contested mark, it considered that, in the absence of any proof of genuine use in the European Union during the relevant period or of any indications of proper reasons for non-use, the rights acquired by The Green Effort had to be revoked in their entirety and deemed not to have had any effect as from 15 March 2016.

The Court dismissed the appeal by The Green Effort Limited considering that the EUIPO’s position on the matter is correct. The arguments are:

As set out in Article 4(4) of that decision, without prejudice to accurately establishing the date of notification, notification will be deemed to have taken place on the fifth calendar day following the day on which EUIPO placed the document in the user’s inbox.

That interpretation meets the requirements stemming from the principle of legal certainty by preventing a decision of the Board of Appeal from being called into question indefinitely, given that, if no access to the document concerned is requested after it has been placed in the recipient’s inbox, the notification is deemed to have taken place on the fifth calendar day after being so placed.

Therefore, since it is common ground that the representative of The Green Effort requested access to the contested decision on 19 September 2017, that he downloaded it and became aware of it on that same day, the General Court did not err in law in deciding that the time limit for bringing an action against the contested decision expired on 29 November 2017, that decision having been notified on 19 September 2017. Therefore, the ground of appeal alleging that the starting point of the time limit prescribed for bringing an action was wrongly determined must be rejected as unfounded.