CJEU dismisses mobile.de appeal
Online vehicle marketplace mobile.de suffered a loss earlier this week when the Court of Justice of the European Union (CJEU) dismissed its appeal in a trademark case.
Back in 2008, mobile.de filed two applications for EU trademarks covering the word ‘mobile.de’ and a figurative sign (the word mobile.de inside a rectangle) for classes 9, 16, 35, 38 and 42. The marks were registered in 2010.
One year later, Bulgaria-based Rezon asked for the marks to be invalidated, citing its own mark (registered in 2008) which features the word ‘mobile’ in a rectangle and covers classes 35, 39 and 42.
The applications for a declaration of invalidity were based on the services in classes 35 (advertising) and 42.
Rezon failed to produce sufficient evidence of use before the European Union Intellectual Property Office’s (EUIPO) Cancellation Division so its invalidity applications were rejected.
On appeal, and after taking into account additional evidence, the EUIPO’s Board of Appeal found that Rezon had proved genuine use of the earlier mark for advertising services for motor vehicles in class 35 and annulled the decisions of the Cancellation Division.
The online marketplace appealed against the decisions to the EU General Court, but the court rejected the appeals in May 2016.
Again, mobile.de appealed, this time to the CJEU. It also requested an order that the oral part of the proceedings be reopened following delivery of an advocate general’s opinion, but this was denied by the CJEU.
The online marketplace offered up six grounds of appeal.
In the second strand of its appeal, mobile.de claimed that the General Court had infringed article 76(2) of regulation 207/2009, under which the EUIPO may disregard facts or evidence which are not submitted in due time.
“By stating that EUIPO ‘may’, in such a case, decide to disregard such evidence, that provision grants EUIPO broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account,” said the CJEU.
According to the CJEU, where no proof of use of the mark is produced within the time limit set by the EUIPO, the application of invalidity must be rejected.
However, this doesn’t apply where some evidence intended to show use has been produced within the time limit (as happened in this case).
The German marketplace also claimed that the General Court had made an incomplete assessment of the criteria justifying taking the evidence into account.
This was also shot down by the CJEU, which stated that the General Court had examined whether the evidence had any “real relevance” but also whether the stage of the proceedings and the circumstances precluded taking the evidence into account.
On mobile.de’s argument of distortion, the CJEU said that although mobile.de was purporting to complain that the General Court distorted the evidence, it is really seeking to have the court undertake a “fresh appraisal”.
The appeal was dismissed and mobile.de ordered to pay the costs.
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