Date: 4 December 2019
Case T-162/18) on Valentine’s Day, the General Court failed to hand a billet-doux to the EUIPO.
On 6 December 2007, the Turkish domestic appliance and consumer electronics brand Beko applied to register the figurative sign shown below as a EUTM in Classes 7, 9 and 11.
The EUTM application was opposed by the Taiwanese multinational hardware and electronics corporation Acer, on the basis of not one or two but 22 (!) earlier marks from around Europe containing the word “altos”. The EUIPO’s Opposition Division partially upheld the oppositions based on two of the earlier marks: the Maltese and the Slovenian word marks for ALTOS in Class 9.
Beko appealed, and this where things became unusual for a trade mark law case. Beko had asked for a suspension of the proceedings pending revocation of the two earlier national marks, and the suspension had been granted. However, the two earlier national marks on which the opposition was based became vulnerable for revocation for non-use during the opposition period. Given that the marks were revoked during the proceedings, the Board of Appeal annulled the Opposition Division’s decision and sent it back for reconsideration of the opposition based on the other earlier marks.
The Opposition Division, having 20 other earlier marks to choose from, plumped for Acer’s earlier Slovak word mark ALTOS in Class 9 and, again, partially upheld the opposition on the ground that there was a likelihood of confusion. Again, Beko asked for a suspension of proceedings; this time because it intended to revoke the Slovakian mark (it hadn’t done so at that point). However, that suspension request was rejected by the Board, who reasoned that the earlier mark had not been vulnerable at the date of publication of the mark applied for and, therefore, its revocation for non-use wouldn’t have affected the opposition.
Beko appealed to the General Court on the ground that it was wrong to reject the suspension request. In Beko’s view, the request was a reasonable one – but was it?
Well, to cut a long story short, the Court concluded that a suspension should be considered if the existence of the earlier mark on which the opposition was based was in doubt, not only at the date of publication of the application for the contested mark, but also at the date of the decision on the opposition.
In other words, there were two different dates: the Court could look forward as well as backward. And that was where the Board had erred: it had only looked at the validity of the ground of opposition at the date of publication of the application for the contested mark. The Court took the view that, if the earlier mark relied upon loses (or could potentially lose) its validity during the course of proceedings, with the result that by the time of the decision the earlier mark had gone, then the proceedings were devoid of purpose. That was apposite reasoning for ensuring that the tribunal had to look at the validity of the earlier mark at those two dates.
However, the Court said that it was a matter of discretion and, in exercising that discretion, one had to look not just at the interest of the parties but at the wider interest of all parties, given that there was scope for abuse: suspending proceedings could create an incentive for trade mark applicants to deviously attempt to delay proceedings until the earlier mark had matured to the point where it might become vulnerable to non-use attacks.
The merits of any non-use allegation as well as the timing of the suspension request will need to be carefully considered in order to show that a trade mark applicant is not trying to game the system. A court will take note of the timing of the suspension request, to ensure that the date wasn’t chosen deliberately by a trade mark applicant tactically waiting until late in the opposition proceedings or invalidation proceedings.
How the trade mark applicant conducts themselves will be the key factor in determining whether the court will use its discretion to grant a suspension; for example, if the applicant had waited many months after vulnerability became an issue, and then applied to the EUIPO with evidence of non-use, then the court would be reluctant to suspend proceedings. This is similar to the procedure of “abuse of process” in English law: if you deliberately try to skew the system, your plans will fail. Ultimately, of course, it depends on the circumstances of the case.
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