red line
inner top line

General Court Annulls EUIPO Board of Appeal’s Decision for Refusal to Suspend Opposition Proceedings

In a judgment issued on November 25, 2014 the General Court annulled the decision of the First Board of Appeal which refused to suspend the opposition proceedings against EUTM no. 009242066 KAISERHOFF (see Royalton Overseas Ltd v. Office for Harmonisation in the Internal Market).

On July 13, 2010, our Romanian partner filed on behalf of Royalton Overseas Ltd. an application for the registration of EUTM no. 009242066 KAISERHOFF covering goods in 08 and 21. An opposition was submitted by S C Romarose Invest Srl on the basis of their earlier Romanian trade mark registration KAISERHOFF for goods and services in classes 11, 21, 35. The EUIPO partially upheld the opposition. Royalton Overseas Ltd. filed an appeal requesting the amendment of the Opposition Division decision and the suspension of the appeal proceedings on the basis of a cancellation action filed by Royalton Overseas Ltd. against the Romanian trade mark registration KAISERHOFF.

The First Board of Appeal dismissed the appeal and ordered the applicant to bear the costs and fees of the appeal proceedings. The reasoning of the Board of Appeal to refuse to suspend the opposition proceedings was that the cancellation action was brought after the appeal and that Royalton Overseas Ltd. did not produce copies of the cancellation action, a translation thereof and failed to establish that the earlier Romanian trade mark registration is subject to a cancellation action. On these grounds the Board of Appeal had serious doubts as to Royalton Overseas Ltd.’s intentions of submitting the suspension. This was further supported by the fact that Royalton Overseas Ltd. had brought in the past other cancellation actions against the earlier Romanian trade mark registration.

In response Royalton Overseas Ltd. brought an action before the General Court arguing that 1). Rule 20(7) and Rule 50(1) of Council Regulation (EC) no. 2868/95 were infringed and there was a breach of principles of equality before the law and impartiality as the Board of Appeal did not consider the evidence in support of the suspension; and 2). infringement of Art. 42(5) and 76(1) of Regulation No 207/2009 and breach of the principles of equality before the law and impartiality as the Board of Appeal did not take into account the evidence produced by Royalton Overseas Ltd. as grounds for rejecting the opposition.

The General Court stated that Art. 76(1) requires all institutions to examine all relevant facts and evidence. Nevertheless, the Board of Appeal erred in finding that Royalton Overseas Ltd. did not produce proof of the filed cancellation action in question. The General Court stated that while the Board of Appeal has a broad and optional discretion to suspend the proceedings and even if the Board of Appeal had examined correctly all evidence, the Board could have decided not to suspend the proceedings. However, what needs to be determined is whether the Board of Appeal has correctly weighed the interests involved when it issued its decision.

In considering the different nature of the opposition and cancellation proceedings the General Court stated that filing a cancellation action during pending opposition proceedings cannot be considered as evidence of bad faith. Therefore, the Board of Appeal could not validly base its refusal for suspension solely on the basis of the cancellation action. Also the Board of Appeal failed to infer from the filed evidence that the other two cancellation actions filed by Royalton Overseas Ltd. were not decided due to procedural reasons, i.e. lack of payment of official fees and withdrawal of one of the action. The Board of Appeal wrongly presumed that by filing a third cancellation action Royalton Overseas Ltd. intends to hold up the opposition proceedings. Therefore, the Court accepted that the Board of Appeal has failed to properly assess the interests of the parties.

Thus, the Court held that in merely stating that it had serious doubts as to Royalton Overseas Ltd.’s true intentions in bringing the cancellation actions before the Bucharest Tribunal, in the absence of a ruling on the merits of either action by the time the contested decision was adopted and in failing to explain what interest Royalton Overseas Ltd. could have had in delaying the decision in the opposition proceedings in the present case or in other proceedings involving the parties, the Board of Appeal erred in refusing to suspend the opposition proceedings.

Following the decision of the General Court Royalton Overseas Ltd. succeeded in the cancellation action against the earlier Romanian trade mark before the Romanian High Court of Cassation and Justice. The EUIPO is now to register EUTM KAISERHOFF no.09242066 for all goods in classes 08 and 21 for which protection was initially sought.

Author: Cristian Nastasse 
 
MADARA LAW
111 Dimitar Petkov Blvd.
Office 3-6, Fl. 3
Sofia 1309
Bulgaria
  Google Maps