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December 1, 2018 Vol. 73 No. 20 Back to Bulletin Main Page

EUROPEAN UNION: General Court Clarifies Competence of the Board of Appeal

In Glaxo Group Ltd. v. EUIPO, intervener Celon Pharma S.A (Case T-803/16, June 6, 2018), the European Union General Court (GC) annulled a decision of the Board of Appeal (BoA), in which the BoA dismissed an appeal by referring to an issue not submitted or addressed by either party.

On March 29, 2011, Celon filed with the European Union Intellectual Property Office (EUIPO) an application for registration of the EU trademark no. 9849191 SALMEX (figurative) in Class 5 (for inhalation products used for the treatments of asthma and chronic obstructive pulmonary diseases) and Class 10 (inhalers) of the Nice Classification as shown below right. 

On April 4, 2013, Glaxo Group Ltd. (Glaxo) filed an application for a declaration of invalidity against the SALMEX mark based on several earlier national marks. Following a request submitted by Celon, Glaxo submitted documents to establish genuine use of its earlier marks. A declaration of invalidity was granted by the EUIPO’s Cancellation Division on September 7, 2015.

On October 20, 2015, Celon filed a notice of appeal with the BoA.

On August 31, 2016, the BoA upheld the appeal finding that Glaxo had failed to demonstrate genuine use of its earlier marks despite the fact that neither party had addressed this question further following Glaxo’s filing of evidence before the EUIPO’s Cancellation Division. Glaxo subsequently brought an appeal before the GC.

The GC initially stated that the Trademark Regulation Article 95(1) (Regulation (EU) 2017/1001) provides that in general, the EUIPO can examine facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the examination is to be restricted to only the facts, evidence, and arguments submitted by the parties.

The GC then noted that when an application for a declaration of invalidity is based on the existence of a likelihood of confusion, the issue of genuine use is not necessarily brought before the EUIPO.

Against this background, the GC stated that a request for proof of genuine use during the invalidity proceedings constituted a new specific claim, which is separate from those which gave rise to the application for a declaration of invalidity. Since the issue of genuine use of the earlier mark had not been specifically addressed by the parties in a separate claim, such claim was outside the scope of the subject matter of the proceedings before the BoA.

Consequently, since the issue of genuine use of the earlier marks was not raised before the BoA by either party, the BoA did not have competence to make a ruling of its own motion on the issue. The GC therefore annulled the decision in its entirety.

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