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30 November 2018Trademarks

CJEU refuses to stay case based on Brexit request

The Court of Justice of the European Union (CJEU) yesterday ruled in a dispute centring on two identical ‘Alcolock’ trademarks and refused to issue a stay surrounding Brexit.

In 2010, the European Union Intellectual Property Office (EUIPO) registered ‘Alcolock’ in classes 9, 37, and 42.

The mark was registered to Alcohol Countermeasure Systems (ACS), which develops technology to improve road safety through preventing alcohol and drug impairment.

In 2012, Lion Laboratories, a producer of breath alcohol analysis products, asked the EUIPO to declare the ‘Alcolock’ mark invalid on the basis of its earlier-registered ‘Alcolock’ UK trademark (2,040,518, registered in 1996).

Lion’s mark covers “apparatus for testing, measuring, indicating, recording and/or analysing breath for alcohol; control apparatus for or responsive to the aforesaid apparatus; parts and fittings therefor” in class 9.

In response, ACS claimed that Lion should establish genuine use of its mark.

The EUIPO’s Cancellation Division granted Lion’s request for invalidity in 2014, after finding that the earlier-registered mark had been put to genuine use.

It also held that the goods and services covered by the ‘Alcolock’ marks are similar and that the marks themselves are identical.

The First Board of Appeal dismissed ACS’s appeal in 2015, again finding that Lion’s mark had been put to genuine use in the UK and that a likelihood of confusion exists between the two marks.

ACS asked the General Court to annul the decision, but in 2017, the court sided with the EUIPO and dismissed the appeal.

In the decision, the court rejected ACS’s claim that Lion had not proved genuine use of its mark.

ACS again appealed against the decision, to the CJEU.

This time, ACS said that if the CJEU does not annul the decision, it should instead set aside the judgment under appeal and stay the proceedings, pending the UK’s withdrawal from the EU.

ACS also claimed that the board had made a “manifest error of assessment” in coming to its conclusion that the mark should be invalidated.

The EUIPO asked the CJEU to dismiss the appeal, and the court granted the UK government leave to intervene in support of the EUIPO’s plea.

Yesterday, the CJEU dismissed some of ACS’s appeal as inadmissible, some of it as unfounded, and some of it as ineffective.

ACS was “attempting to obtain a new appraisal of the facts” already assessed by the General Court, the CJEU said, but the company failed to establish that the General Court had distorted the facts of the matter.

This argument was therefore inadmissible, the CJEU explained.

Also, the CJEU confirmed that genuine use of Lion’s earlier-registered mark had been sufficiently established during the relevant period, and the General Court had correctly considered the relevant characteristics of the market when considering the earlier-registered trademark’s use.

The CJEU also said it would be contrary to jurisprudence to require a stay of proceedings on the basis of the UK’s future withdrawal from the EU.

“That withdrawal would not retroactively affect the outcome of invalidity proceedings based on an earlier trademark of that member state,” the CJEU said.

The CJEU dismissed the appeal and ordered ACS to bear its costs and those incurred by the EUIPO.

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