The EUIPO Grand Board of Appeal has published two decisions concerning (1) descriptive character of geographical terms and (2) a request for proof of use. Another case, on public policy and morality, has been referred to the Grand Board.
This case involved a figurative application (pictured) for real estate services in class 36, which was registered in April 2014.
Mallorca Mietboerse SL filed an application for a declaration of invalidity, arguing that Portixol is a place in Palma de Mallorca and that the relevant public would perceive the term as purely descriptive of a place where real estate can be purchased or rented. It also argued that the contested EUTM was filed in bad faith.
The Cancellation Division rejected the application for a declaration of invalidity. In May 2017, the First Board referred the case to the Grand Board.
In its decision (R0368/2016-G), the Grand Board clarified the assessment of the descriptive character of geographical terms, in particular the name of a small geographical location, in light of the most recent case law of the General Court.
It found that the evidence submitted by the cancellation applicant was not able to support the contested mark’s alleged descriptiveness. Hence, it could not be inferred from the evidence whether a non-negligible part of the relevant public perceived the term Portixol as referring to a geographical name at the time of filing the contested mark.
Neither would it be perceived as an indication of the origin of the services covered by the contested EUTM. In fact, no sufficient and specific relationship has been demonstrated by the cancellation applicant as regards the contested EUTM with its verbal elements INMOBILIARIA PORTIXOL and the relevant services at the time of filing.
Consequently, the evidence presented did not lead to the conclusion that this denomination or the contested mark as a whole was already perceived as being descriptive in relation to the relevant goods and services at the filing date of the contested mark.
The cancellation applicant’s submissions also did not provide sufficient indications that the contested EUTM as a whole and the relevant services would come to have such a relationship in the future. Article 7(1)(b) EUTMR does not apply as a consequence, nor there are any other reasons why the contested EUTM would fall foul of this provision.
None of the criteria for the application of Article 59(1)(b) EUTMR have been met. Nevertheless, the registration of the contested EUTM does not prevent the cancellation applicant from continuing the use of its sign in the territory at issue, in accordance with the relevant national provision.
DIESEL SPORT beat your limits
In this case, Wolfgang Diesel filed a figurative EUTM application in May 2017 (pictured) covering various goods and services in classes 5, 21, 25, 28, 32, 35 and 41. It was opposed by Diesel SpA based on its earlier national and international trade mark rights in DIESEL.
Wolfgang Diesel filed a request for proof of use but this was rejected as being inadmissible as it was not filed in a separate document. The opposition was partly upheld, and Wolfgang Diesel appealed. In October 2019 the case was referred to the Grand Board, which invited the EUIPO Executive Director to comment upon questions of general interest (Article 29 EUTMDR) to clarify the Office practice.
In its decision (R2142/2018-G), the Grand Board said a request for proof of use must be submitted in a 'separate document' (Article 10(1) EUTMDR). In this case, the request timely filed with the applicant’s reply to the opposition was not presented as a separate submission, on a ‘separate sheet’ or as a ‘separate annex’ of the same submission.
The request followed by observations were under separate titles, but the request was part of the same submission presented with continuous pagination and not as a list of two independent ‘annexes’. The request was not ‘in a separate sheet’, since title ‘I’ ended on the same page where title ‘II’ began.
Thus the request was not in a ‘separate document’, but was merged into the observations in reply to the opposition. After being notified of the deficiency, instead of asking for a continuation of proceedings, the applicant filed a second request, in a separate document, which was belated as it was filed after the expiry of the time-limit to reply to the opposition.
Both requests were thus inadmissible as they did not comply with Article 10(1) EUTMDR. On the merits, the likelihood of confusion was confirmed.
On 10 May 2021, the Fifth Board of Appeal decided to refer case R 2307/2020-5, MARICON PERDIDO to the Grand Board. The case concerns the eligibility for registration of a verbal mark that may be perceived as a homophobic expression.
The Boards referred the case as there is inconsistent case law between the absolute grounds for refusal of trade marks on the basis of being contrary to accepted principles of morality under Article 7(1)(f) EUTMR and the right to freedom of expression under Article 11 of the Charter of Fundamental Rights of the European Union.
Groups or bodies representing manufacturers, producers, suppliers of services, traders or consumers that can establish an interest in the result of the case may submit written observations within two months following publication in the Official Journal, pursuant to Article 37(6) EUTMDR.