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21 February 2018Trademarks

EUIPO told to pay the meter in Swiss electricity dispute

The European Union Intellectual Property Office ( EUIPO) has been ordered to pay all costs in a dispute between two Swiss electricity companies.

The EU General Court published its ruling today, February 21.

In June 2009, the EUIPO granted Repower AG protection in the EU for its international trademark registration 1,020,351 for the word ‘Repower’.

The trademark falls under classes 4, 9, 37, 39, 40 and 42, protecting goods and services including electric energy, its maintenance, transport and production, research and development services, and conducting instruments.

In June 2013, repowermap.org—the intervener—contested the trademark. It alleged that the trademark was descriptive and devoid of any distinctive character for the goods and services covered.

The Cancellation Division granted the application for a declaration of invalidity for some services covered by classes 37 and 42. They include the repair and maintenance of transmission and distribution installations, and services in the field of technology and related research and development services.

The Cancellation Division rejected the declaration of invalidity for the other goods and services.

In response, repowermap.org filed an appeal with the EUIPO in September 2014 against the decision to reject the invalidity application. The Fifth Board of Appeal of the EUIPO dismissed the appeal in February 2016.

The intervener, repowermap.org, appealed against the Fifth Board of Appeal’s decision, this time lodging an application at the General Court.

Following this action, the Fifth Board of Appeal informed the parties that the board had found the appeal was “vitiated by insufficient reasoning”. The board said it considered to revoke the decision “in order to carry out a detailed analysis of the distinctive and descriptive features of the contested mark with regard to the goods and services covered by the sign”.

In August 2016, the Fifth Board of Appeal revoked its earlier decision (from February 2016) on the grounds that the EUIPO had an obligation to justify its decisions and analyse the grounds for refusal for the goods and services concerned.

Repower AG asked the court to annul the February 2016 decision. It sought to rely on four pleas, including that that there was a lack of legal basis; that the boards of appeal have no jurisdiction to revoke their decisions; and that there was a failure to state reasons.

It also alleged infringement of article 80 of Regulation number 207/2009—now article 103 of Regulation (EU) 2017/1001—which deals with the general principle of authorising law that withdraws an illegal administrative act.

The General Court rejected all of the appeals.

It said that under usual circumstances, the unsuccessful party would have to pay the costs.

However, Repower AG “did not have to bring the present action and the intervener would not have had to intervene if the EUIPO had not had to adopt the contested decision in order to revoke the decision on February 8, 2016,”, according to the court.

Subsequently, the court ruled that the EUIPO should bear its own costs and be ordered to pay the costs incurred by both Repower AG and repowermap.org.

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