Approximation of laws: european union trademark

In 2017, Mr Rossi, Mr Vacante and Shoppi Ltd (‘the interveners') obtained from the European Union Intellectual Property Office (EUIPO) registration of the EU figurative mark Shoppi for goods in the IT sector, advertising services and electronic communication services (1). The company Shopify Inc. (‘the applicant') filed with EUIPO an application for a declaration of invalidity based on the existence of a likelihood of confusion with the earlier EU word mark SHOPIFY (2).

That application was first upheld by the Cancellation Division of EUIPO before being dismissed by its Board of Appeal, which concluded that there was no such likelihood of confusion on account, in particular, of the low distinctiveness of the earlier mark and the lack of sufficient evidence submitted by the applicant in order to demonstrate the enhanced distinctiveness of the earlier mark through use.

The applicant seeks the annulment of the decision of the Board of Appeal of EUIPO (‘the contested decision'). By its judgment, the General Court dismisses that action and rules for the first time on the assessment of the enhanced distinctiveness of the earlier mark after the withdrawal of the United Kingdom from the European Union and on the necessity of examining beforehand the enforceability of the use of the earlier mark at the time of EUIPO's decision on the application for a declaration of invalidity.

First of all, the Court recalls that the agreement on the withdrawal of the United Kingdom from the European Union and Euratom (3), in force since 1 February 2020, provides for a transition period from 1 February to 31 December 2020, after which EU trade mark legislation no longer applies to the United Kingdom (4). In the present case, although the contested mark had been filed before the transition period, the contested decision was adopted after the expiry of that period.

Next, the Court refers to its case-law according to which, in the context of invalidity proceedings, the proprietor of an earlier industrial property right must establish that he or she may prohibit the use of the mark at issue, not only on the filing date of that mark, but also on the date on which EUIPO decides on the application for a declaration of invalidity. Accordingly, the Court considers that, for the evidence of enhanced distinctiveness of the earlier mark acquired through use in the United Kingdom to be relevant for the application for a declaration of invalidity of the contested mark, that use must still be capable of being relied on at the date on which EUIPO rules on the application for a declaration of invalidity. In the present case, however, the contested decision post-dating the expiry of the transition period, the Board of Appeal was obliged not to take into account the use of the earlier mark in the United Kingdom, which was no longer enforceable at that date, and thus to disregard that evidence.

In addition, the Court notes that, in the light of the fundamental principle of territoriality of intellectual property rights (5), after the expiry of the transitional period, no conflict can arise in the United Kingdom between the contested mark and the earlier mark, since those marks are no longer protected in that territory.

Lastly, the Court considers that, while the date to be taken into account for assessing the enhanced distinctiveness of the earlier mark is the filing date of the contested trade mark application, the requirement of permanence or persistence of the prior right at the date on which EUIPO rules on the application for a declaration of invalidity is a matter of enforceability, which must be examined prior to a substantive assessment such as that of the enhanced distinctiveness of the earlier mark.

(1) At issue were goods in Classes 9, 35 and 38 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.

(2) Within the meaning of Article 8(1)(b) and Article 53(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

(3) Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (OJ 2020 L 29, p. 7; ‘the withdrawal agreement').

(4) Articles 126 and 127 of the withdrawal agreement.

(5) Within the meaning of Article 1(2) of Regulation 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).