CJEU offers clarity on EU General Court’s scope of review
The Court of Justice of the European Union (CJEU) has concluded that the EU General Court erred in dismissing arguments because they had not been put before the European Union Intellectual Property Office (EUIPO).
In a decision handed down earlier today, June 18, the CJEU clarified the meaning of article 76(1) of regulation No 207/2009 and article 188 of the Rules of Procedure of the General Court.
Under article 76(1), the EUIPO can only take into account acts, evidence and arguments submitted by the parties and the relief sought by them and, under article 188, the pleadings lodged by the parties in proceedings before the General Court may not change the subject matter of the proceedings.
Laudatory connotations and consequences
In 2015, food company Przedsiębiorstwo Produkcyjno-Handlowe ‘Primart’ Marek Łukasiewicz applied to register a logo featuring the word ‘Primart’ as an EU trademark, covering goods such as sugar, coffee, tea and ice creams.
Soon after, food distributor Bolton Cile España opposed the mark, citing its own Spanish trademark ‘Prima’ in opposition. After the EUIPO’s Opposition Division dismissed the opposition, Bolton Cile appealed against the decision.
The EUIPO’s Fourth Board of Appeal sided with Bolton Cile, annulling the Opposition Division’s decision and refusing the trademark application.
Primart then brought an action for annulment of the appeal board decision, but the EU General Court dismissed the action in its entirety and upheld the appeal board’s findings on the existence of a likelihood of confusion.
In its decision, the General Court considered Primart’s arguments concerning the allegedly weak distinctive character of the earlier mark to be inadmissible, as they had not been put forward before the Board of Appeal.
On appeal before the CJEU, Primart argued that that the General Court infringed article 76(1) by declaring its argument inadmissible on the ground that it had been put forward before it for the first time.
First, Primart claimed that the meaning of the word ‘prima’, which means ‘first’, ‘foremost’, ‘best’ or ‘principal’ and has a laudatory connotation, constitutes a well-known fact.
Well-known facts don’t need to be raised during the administrative stage of the proceedings—a party can challenge the accuracy of well-known facts before the General Court even if it did not mention them in the proceedings before the EUIPO.
According to Primart, if the General Court had taken into account the well-known fact that the word ‘prima’ has a laudatory meaning, it would have had to find that the earlier mark has weak inherent distinctiveness and would have come to a different conclusion on the existence of a likelihood of confusion.
Primart also argued that because the appeal board analysed issues relating to the meaning of the word ‘prima’ and the distinctive character of the earlier mark, it has the right to challenge that assessment before the General Court.
While the EUIPO agreed that the General Court had made an error of law in finding that the appellant’s argument was inadmissible, it argued that the error of law is “without consequence for the legality of the judgment under appeal”, because Primart’s argument before the General Court was “manifestly unfounded”.
Wearing blinkers
In today’s decision, the CJEU cited the advocate general’s opinion, from November last year, which observed that the Board of Appeal is required to decide on all issues which, “in the light of the facts, evidence and arguments provided by the parties and the relief sought, are necessary to ensure a correct application of that regulation and in respect of which it has all the information required in order to be able to take a decision, even if no element of law related to those issues has been relied on by the parties before it”.
The advocate general had also previously stated that the logic underlying case law which holds that EU courts cannot confine themselves to the arguments put forward by the parties in support of their claims is that the courts cannot be forced to “wear blinkers” when reviewing the EUIPO’s findings.
According to the CJEU, the General Court’s reasoning “misconstrued the scope” of article 76(1).
“In the light of that obligation incumbent on the Board of Appeal, [article 76 and article 88] cannot be interpreted as meaning that the arguments seeking to call into question the considerations of the Board of Appeal relating to the issues on which it is required to take a decision will not form part of the subject matter of the proceedings before the General Court if they have not been put forward during the proceedings before the Board of Appeal,” said the CJEU.
And, contrary to the EUIPO’s contention, the CJEU concluded that the error of law is capable of causing the judgment to be set aside.
“Consequently, it cannot be ruled out that, in the present case, the General Court would have reached a different conclusion to that reached in the judgment under appeal if it had regarded the appellant’s arguments relating to the weak distinctive character of the earlier mark as admissible,” said the court.
The case has been referred back to the General Court.
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