Apr 1, 2015

IP Litigation in Europe - Action Before Courts and Rights-Granting Offices

Which court or body a person chooses to bring a claim in can have a serious impact on the way the claim is managed, how much it might cost and the remedy/outcome.  This article considers a recent case in which different options where pursued to challenge the use/validity of trade marks.


National courts in different jurisdictions often compete to attract 'forum-shoppers' i.e. those who want to instigate claims in courts that offer them advantages be they in terms of time, cost or legal approach. The computerisation of files and pre-trial case management bring down both the cost and the time spent litigating, therefore the use of courts is on the rise.

Rights-Granting Offices

With regard to bringing 'proceedings' before rights-granting offices the process varies widely.  Proceedings before the European Patent Office are often slow, complex and unpredictable in both procedural and substantive terms. The Office for Harmonisation in the Internal Market ("OHIM") has been held up as a better example of how rights can be granted and administered, though the comparison is an unfair one because the subject matter of patent applications is much harder to grasp.

Case T 378/13

Case T 378/13 Apple and Pear Australia Ltd and Star Fruits Diffusion v OHIM, Carolus C. BVBA is a decision of the Fourth Chamber of the General Court of the European Union which should be carefully considered by businesses and traders who live in a world in which brands are litigated in courts but administered by bureaucrats.


In 2009 Carolus applied to register as a Community Trade Mark ("CTM") the word sign 'English pink' in Class 31 (largely agricultural purposes). In April 2010 Apple and Pear Ltd and Star Fruits Diffusion Ltd ("Opponents") challenged the mark's registration for all the goods for which registration was sought. The Opponents relied on three earlier CTM's for goods in Class 31: (i) the word mark PINK LADY and two a figurative marks, designating 'fresh fruit; apples, fruit trees; apple trees'.

The Opponents argued that on account of the similarity of 'English pink' to their marks and the identical nature of the parties' respective goods, there was a likelihood of confusion of the relevant consumers and that given the reputation of the earlier trade marks, the use by Carolus of the term 'English pink' would, without due cause, take advantage of the repute of their earlier marks.

The Opposition Division rejected the opposition and the Opponents appealed to the OHIM Board of Appeal.

Litigation in Court

Before the Board of Appeal could consider its decision, the Opponents successfully sued Carolus in the Tribunal de commerce de Bruxelles, in its capacity as a Community trade mark court.  It annulled the Benelux mark ENGLISH PINK and ordered Carolus to stop using that mark throughout the EU. The Opponents sent OHIM a copy of that judgment and informed OHIM that Carolus had accepted that as final judgment.

Appeal of the decision of the Opposition Division

Having won with regard to ENGLISH PINK, the Opponents must have expected that the result at OHIM was a formality. However, in May 2013 the Fourth Board of Appeal of OHIM ("Board") dismissed their appeal.

The Board held that, since the marks were not visually, conceptually or phonetically similar, there was no likelihood of confusion. In any event, the Opponents had also failed to establish the reputation of their earlier word mark and had not shown that the public associated PINK LADY with them rather than with apples of that variety as produced by any other grower. In reaching its decision the Board only referred to the evidence before the Opposition Division: everything else was too late which included the final judgment of the Tribunal de commerce de Bruxelles.

Annulment or Alteration of the Board's Decision

The Opponents applied for annulment of the decision of the Board or for it to be altered based on the failure of the Board to take account of the judgment of the Tribunal de commerce de Bruxelles and on the application of the principle of res judicata (a matter already judged).

The General Court agreed that the decision of the Board should be annulled.  However, for various reasons which are set out in detail in the judgment it did not agree that it could be altered.

The point the General Court was at pains to point out was that infringement proceedings are not oppositions and national marks are not CTM's.

Some do not believe that the efficiency of the single market is greatly enhanced by a system that takes such a long and winding way to travel such a short distance and finds it surprising that the Tribunal de commerce's ruling, once communicated to OHIM, was not just automatically channelled into into relevant case file but that it was stapled to it by such physical or electronic means that no-one could avoid seeing it and taking it into account - see The IPKat article on the case here.

in: Case Law, Civil Procedure, Companies, News, Trade Marks

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