The General Court did not err in law by finding that the proof of genuine use of the earlier mark consisting of the word sign ‘ALCOLOCK’ and registered in the UK in 1996 could be furnished by means of evidence establishing use of another mark consisting of the same word sign ‘ALCOLOCK’ registered in the UK in 2004: it follows directly from the wording of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 that use of the mark in a form differing from the form in which it was registered is considered use for the purpose of the first subparagraph of that article, so long as the distinctive character of the mark in the form in which it was registered is unaltered, CJEU has previously held that hat provision also applies where that different form is itself registered as a trade mark (IPPT20121025). The General Court did not err in law in not examining the two relevant periods separately when examining genuine use: it is sufficient that a trade mark has been put to genuine use during a part of the relevant period, in the present case the two periods overlapped so the proof relating to the period of overlap could be taken into account for each of the two relevant periods. The General Court was not required to stay the proceedings pending Brexit in order to be able to annul the decision on the ground that an earlier UK trade mark could no longer be used to oppose the maintenance of an EU trade mark: the General Court may not annul or alter a decision on grounds which come into existence subsequent to its adoption, EU law continues in full force and effect until the time of the actual withdrawal from the EU.
In 2010, Alcohol Countermeasure Systems obtained registration of the EU word mark ALCOLOCK from EUIPO. In 2012, Lion Laboratories filed an application for a declaration of invalidity of the contested mark pursuant to Article 53(1)(a) of Regulation No 207/2009, read in conjunction with, inter alia, Article 8(1)(a) and (b) of that regulation. That application was based on the earlier word mark ALCOLOCK, registered in the United Kingdom on 16 August 1996. The appeal mainly concerns the proof of genuine use of this UK trade mark.
The CJEU finds that the General Court did not err in law by finding that the proof of genuine use of the earlier mark consisting of the word sign ‘ALCOLOCK’ could be furnished by means of evidence establishing use of another mark consisting of the same word sign ‘ALCOLOCK’ but registered in the UK in 2004. According to the Court, it follows directly from the wording of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 that use of the mark in a form differing from the form in which it was registered is considered use for the purpose of the first subparagraph of that article, so long as the distinctive character of the mark in the form in which it was registered is unaltered.
The General Court also did not err in law in not examining the two relevant periods separately, since it is sufficient that a trade mark has been put to genuine use during a part of the relevant period, and in the present case the two periods overlapped so the proof relating to the period of overlap could be taken into account for each of the two relevant periods.
Lastly, the General Court should not have stayed the proceedings pending the date of the withdrawal of the UK from the EU in order to be able to annul the decision at issue on the ground that an earlier UK trade mark could no longer be used to oppose the maintenance of an EU trade mark. The Court states that the General Court may not annul or alter a decision on grounds which come into existence subsequent to its adoption. Moreover it finds that EU law continues in full force and effect until the time of the actual withdrawal from the EU.
IPPT20181129, CJEU, Alcohol Countermeasure Systems v EUIPO
