This article first appeared on World Trademark Review in February 2019. For further information please go to www.worldtrademarkreveiw.com.
Time Gate sought declaration that BIG SAM SPORTSWEAR COMPANY was invalid based on earlier mark SAM
Board of Appeal found that registration was invalid and rejected claim of acquiescence
Court found that board was right to hold that claim of acquiescence was inadmissible
In Ilhan v European Union Intellectual Property Office (EUIPO) (Case T-785/17, 24 January 2019), the General Court has upheld the decision of the Fifth Board of Appeal of the EUIPO in concluding that the EU registration of the trademark BIG SAM SPORTSWEAR COMPANY (figurative, as depicted below) was invalid on the basis of an earlier EU trademark registration for SAM owned by Time Gate GmbH.
In 2006 Mr Ercan Ilhan applied to register BIG SAM SPORTSWEAR COMPANY in the European Union for clothing in Classes 25. The mark was registered as the EU designation of International Registration No 0891276 on 23 March 2009.
Time Gate applied, on 4 December 2014, to have the registration declared
invalid under Article 53(1)(a) of Regulation 207/2009 (now Article 60(1)(a) of
Regulation 2017/1001, which provides that relative grounds for refusal are also
grounds for invalidity), read in conjunction with Article 8(1)(b) of that regulation (now Article 8(1)(b) of Regulation 2017/1001) (likelihood of confusion) on the basis of its prior international registration designating the European Union SAM (No 578576), which also covers clothing in Class 25.
Ilhan argued in defence that the conditions of Article 8(1)(b) had not been met. In its decision of 30 March 2016, the Cancellation Division held the registration to be invalid.
Board of Appeal decision
Ilhan appealed, again arguing that the conditions of Article 8(1)(b) had not
been met, and attempting to raise for the first time a defence that Time Gate had acquiesced to its use of BIG SAM SPORTSWEAR COMPANY pursuant to Article 54(1) of Regulation 207/2009 (now Article 61(1) of Regulation 2017/1001). Article 61(1) provides that, where the proprietor of an EU trademark has acquiesced, for a period of five successive years, in the use of a later EU trademark while being aware of such use, it can no longer challenge the registration on the grounds of invalidity, unless the registration was applied for in bad faith.
The Board of Appeal held that the claim of acquiescence was inadmissible
because it had been raised for the first time before the Board of Appeal, whereas it should have been put before the Cancellation Division. The evidence adduced in support of the acquiescence claim could therefore not be accepted since it was new, not merely supplementary. The Board of Appeal also stated that, even if the claim of acquiescence had been admissible and it had been possible to examine the new evidence, the evidence was insufficient to establish that Time Gate was aware of the use of the contested mark in the relevant territory. Secondly, the Board of Appeal considered that the Cancellation Division had been fully entitled to conclude that there was a likelihood of confusion within the meaning of Article 8(1)(b).
General Court decision
Ilhan again appealed, arguing that the Board of Appeal's assessment of the
evidence of acquiescence was incorrect, and adducing yet more new evidence
purportedly showing acquiescence. Ilhan also contested the Board of Appeal's
decision in respect of likelihood of confusion.
The court upheld the Board of Appeal's decision in full. In respect of the
acquiescence claim, the court referred to case law establishing that:
the purpose of actions before the Courts is to review the legality of decisions of the Board of Appeal of Appeal of EUIPO … it is not the Court's function to review the facts in light of documents produced for the first time before it. (Paragraph 26)
Thus, the review of the contested decision was undertaken solely in light of
the evidence before the Cancellation Division and not the new evidence adduced at the Board of Appeal and General Court stages. Therefore, the Board of Appeal was right to hold the claim of acquiescence inadmissible. In respect of Ilhan's challenge to the Board of Appeal's assessment of the evidence, the court held this to be ineffective because "a plea levelled at reasons which are included in a decision for the sake of completeness cannot result in the annulment of that decision and [is] therefore ineffective" (Paragraph 29).
In respect of the likelihood of confusion claim, the court found that there was
"a risk that part of the relevant public might not clearly understand that the
marks at issue belong two different and competing undertakings" (Paragraph 81) and that the Board of Appeal was therefore correct in finding a likelihood of
confusion (Paragraph 82).
The key takeaways from this case are reiterations of established case law,
New claims and evidence raised for the first time at Board of Appeal or General Court level are not acceptable unless there is justification for raising them late; and
Appeals against reasons included in a decision for the sake of completeness only are ineffective.
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