In Olimp Laboratories sp z oo v European Union Intellectual Property Office (EUIPO) (Case T-511/22), the General Court has examined whether parties can rely on earlier decisions of the EUIPO to determine the outcome of an opposition case on the premise that the EUIPO is subject to the principles of protection of legitimate expectations and of legal certainty.
Background
Olimp Laboratories, a Polish entity, is the proprietor of the earlier EU and national figurative marks (claimed as a ‘family’ of marks) depicted below:
In 2020 Olimp opposed an EUTM application by German national Sonja Schmitzer for the following mark:
Both marks overlapped in Classes 5 and 35, among others. The opposition was rejected by the EUIPO and the Board of Appeal subsequently dismissed the appeal by the Polish company, citing no likelihood of confusion under Article 8(1)(b) of Regulation 2017/1001.
Appeal to the General Court
This decision was further appealed to the General Court, with Olimp seeking an annulment of the Board of Appeal’s decision and a re-hearing by the EUIPO, and asking for the adverse decision of the EUIPO to be overturned. The EUIPO and Schmitzer both sought to dismiss the action.
In its arguments, Olimp pleaded infringement of Article 8(1)(b) and infringement of the principles of the protection of legitimate expectations and of legal certainty.
Decision
Article 8(1)(b)
Olimp’s complaints were as follows:
The court rejected as unfounded the contention that the word element ‘hpu and you’ lacked distinctive character, stating that the overall impression of the mark gave rise to the perception that the word element in this instance had to be considered as the distinctive element due to its positioning and readability.
For the second complaint, relying on the above reasoning, the court pointed out that the word element clearly distinguished the marks from each other. In addition, even though the signs at issue all contained a combination of three hexagons, those combinations differed in their orientation, position and colour. As such, the court rejected this complaint.
In relation to the ‘family of marks’ (likelihood of association) argument, the court held that this could be invoked only if two conditions are cumulatively satisfied:
In this case, as Olimp had failed to provide evidence in which the common element to its registrations was the specific combination of three hexagons, and also did not provide sufficient evidence of proof of use, the court upheld the Board of Appeal’s assessment that this was not a family of marks.
Principles of the protection of legitimate expectations and of legal certainty
Olimp claimed that the EUIPO had infringed the principles of the protection of legitimate expectations and of legal certainty by failing to refuse registration of the mark when it could claim rights relating to very similar earlier marks. It went on to argue that, in 10 earlier decisions of the EUIPO, registration was refused in respect of later figurative marks on the ground that those marks were regarded as visually similar. For this reason, Olimp believed that it had a legitimate expectation that its own opposition should succeed on the basis of these earlier decisions.
The court disagreed, pointing out that the decisions concerning the registration of a sign as an EUTM which the Boards of Appeal are led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation as interpreted by the EU judicature, and not on the basis of a previous decision-making practice. The court concluded that the EUIPO’s earlier decisions cannot give rise to legitimate expectations.
In addition, the court held that, while the EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law and although, in the light of the principles of equal treatment and of sound administration, the EUIPO must take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not, those principles must be applied with respect for the principle of legality. In the present case, the applicant could not reasonably rely on earlier decisions of the EUIPO in part because it had failed to explain the relevance of these decisions in relation to the case at hand.
For the reasons set out above, the court dismissed the appeal.
Comment
This decision, while giving some clarity on the extent that the principles of the protection of legitimate expectations and of legal certainty can be relied upon by EUTM owners, will not be very welcome to IP practitioners and trademark owners alike, as it continues to highlight the weaknesses of the legal and regulatory regime - particularly when it comes to the IP rights of business owners. Commerce places a high value on certainty, which the current system does not appear to be able to satisfactorily address.
This article first appeared in WTR Daily, part of World Trademark Review, in November 2023. For further information, please go to www.worldtrademarkreview.com.
