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6 March 2020TrademarksRory O'Neill

CJEU sides with Burlington Arcade owners, reverses General Court

The owner of the Burlington Arcade in London has scored a victory at the EU’s highest court, which cancelled several European Union Intellectual Property Office (EUIPO) decisions in favour of German brand Burlington Fashion.

The ruling, issued Wednesday, March 4 by the Court of Justice of the European Union (CJEU), closely follows the June 2019 opinion of advocate general Gerard Hogan, who advised the court to reverse the decisions of the EUIPO and EU General Court.

Burlington Fashion applied to register four trademarks at the EUIPO, including a word mark for the company name as well as three logos, between 2008 and 2009.

Tulliallan Burlington, owner of the London arcade, intervened to oppose the marks, citing its previous registrations for ‘Burlington’ and ‘Burlington Arcade’.

However, the EUIPO dismissed all of the oppositions, decisions which were upheld on appeal by the General Court.

The General Court said Tulliallan had not adequately specified the goods and services covered by the ‘Burlington’ marks in class 35 for retail services, as required by the 2005 decision Praktiker Bau- und Heimwerkermärkte (C‑418/02).

But in Wednesday’s opinion, the CJEU said the General Court had erred in applying the Praktiker precedent to three of the four Tulliallan marks which were registered several years prior to the decision.

The CJEU said it was “clear that … Praktiker concerns only applications for registration as trademarks and does not concern the protection of trademarks registered at the date of that judgment’s delivery”.

The court’s ruling means that the previous General Court and EUIPO decisions in favour of Burlington Fashion have been annulled.

The CJEU also awarded costs to Tulliallan Burlington.

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More on this story

Trademarks
16 October 2020   In March this year, the Court of Justice of the European Union opened the acceptance of sales services in opposition procedures in the joined cases of C-155/18 and C-158/18 P, Tulliallan Burlington v European Union Intellectual Property Office (EUIPO) and Burlington Fashion.
Trademarks
27 June 2019   An advocate general has advised the Court of Justice of the European Union that the EU General Court erred in requiring the owners of London’s Burlington Arcade to specify the goods and services covered by three UK marks registered prior to the date of the relevant case law.
Trademarks
26 June 2020   A legal adviser to the EU’s top court has said that ‘retail services’ should include online marketplaces when categorising the goods and services covered by trademarks.