Revocation earlier mark rightly not taken into consideration to assess likelihood of confusion

26-10-2016 Print this page
IPPT20161026, CJEU, Westermann v EUIPO

TRADE MARK LAW

 

The General Court did not err in law by not taking in consideration the revocation of the old trademark in the decision on likelihood of confusion. Revocation of the old trademark was before the date of the appealed decision of the General Court.

 

"29. In addition, the Court has already held that the expiry of an earlier mark after the action had been brought before the General Court did not deprive the decision of the Board of Appeal of EUIPO of its purpose or of its effects. The assessment in that decision that there was a likelihood of confusion between the marks at issue therefore continued to produce its effects at the time the General Court delivered its judgment (order of 8 May 2013, Cadila Healthcare v OHIM, C-268/12 P, not published, EU:C:2013:296, paragraphs 31 to 34).

30. In view of those considerations, and since, in the present case, the actual date of revocation of the earlier mark which formed the basis for the opposition to the registration of the mark applied for by Westermann, namely 13 June 2013, is subsequent to the decision at issue, which is dated 3 April 2013, it must be held that the General Court was not required, during its review of the lawfulness of the decision at issue, to take into account the EUIPO decision revoking that earlier mark."

 

To hold that the General Court is required to take into consideration a EUIPO decision revoking an earlier mark on which an opposition is based, would be contrary to the settled case-law of the Court according to which the General Court cannot annul or alter such a decision on grounds which come into existence subsequent to its adoption.

 

"31. It must be added that, in accordance with Article 55(1) of Regulation No 207/2009, in the event of revocation, the EU trade mark shall be deemed not to have had, as from the date of the application for revocation, the effects specified in that regulation.

32. To hold that the General Court is required to take into consideration a EUIPO decision revoking an earlier mark on which an opposition is based, even though this occurred after the adoption of the decision of the Board of Appeal of EUIPO finding the opposition well founded, would be contrary to the settled case-law of the Court, cited in paragraph 27 of the present judgment, according to which the General Court cannot annul or alter such a decision on grounds which come into existence subsequent to its adoption.

33. In the light of the foregoing, it must be held that the General Court did not err in law in its review as to whether the assessment of the likelihood of confusion between the marks at issue carried out by the Second Board of Appeal of EUIPO in the decision at issue was well founded, since, at the date on which that decision was adopted, the earlier mark which formed the basis for the opposition to the registration of the mark applied for by Westermann was producing the effects specified in Regulation No 207/2009.

34. The argument raised by Westermann in that regard must therefore be rejected as unfounded."  

 

IPPT20161026, CJEU, Westermann v EUIPO

 

C-482/15 P - ECLI:EU:C:2016:805