EU court says EUIPO erred in refusal to stay
The European General Court has ruled that the European Intellectual Property Office (EUIPO) erred in its refusal to suspend opposition proceedings against a mark applied for by a Turkish electronics company.
In a decision today, February 14, the court upheld a plea by domestic appliances company Beko that the EUIPO’s Fifth Board of Appeal failed “to look at the whole picture” and erred in its refusal to suspend opposition proceedings against Beko’s applied-for mark.
In December 2007, Beko applied to register a mark for the figurative sign ‘ALTUS’, written in bold, grey letters.
In November 2008, Taiwanese technology company Acer opposed the registration based on 22 of its earlier trademarks.
Beko had asked the Board of Appeal to suspend the opposition proceedings as it had brought revocation proceedings against one of Acer’s earlier national marks, namely the Slovenian trademark ‘ALTOS’.
But the board refused. In December 2017, the Board of Appeal found that there was a likelihood of confusion between Beko’s applied-for mark and the Slovenian mark. Shortly after, in March 2018, Acer’s rights for the earlier Slovenian mark were revoked due to lack of genuine use.
In today’s decision, the ruled that the board’s findings were “vitiated by an error of law”.
The board had said that the Slovenian trademark could serve as the basis of the opposition despite any chance of revocation. The court found that this conclusion was incorrect.
It said the fact the earlier mark was valid at the time of opposition does not render the revocation proceedings against Acer’s mark as “irrelevant”.
It disagreed with the board, which said that “whatever the outcome” of the separate revocation proceedings and “the chances that they may succeed”, had “no effect on the validity of the opposition”.
The court said that by failing to assess the chances of success of the revocation proceedings brought against Acer’s earlier mark, the board “failed to take into account all aspects” of Beko’s situation and could not have “properly weighed the various interests involved”.
It also said the board erred in its refusal to suspend the opposition proceedings based on the fact that the revocation action against the Acer’s earlier mark had been brought by Beko after Acer filed its opposition.
The court said this fact alone “does not establish bad faith” on the part of Beko.
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