EGC: Pink Lady vs. English Pink

The European General Court (EGC) decided that the decision of the BoA has to be annulled, but not altered   because it did not mention an earlier decision of a Community Trademark (CTM) court (Judgment dated 25 March 2015; Case No.: T‑378/13). Background of the Case and Subject Matter On 13 October 2009 Carolus C. BVBA filed an application for registration of a CTM at the Office for Harmonization in the Internal Market (OHIM). The trademark for which registration was sought for was the word mark “English Pink“ for - among others - fresh fruits. The application for a CTM was published in the CTM Bulletin No 2010/014 of 25 January 2010. On 20 April 2010, Apple and Pear Australia Ltd and Star Fruits Diffusion filed a notice of opposition which was based on the word mark “PINK LADY“ (CTM No. 2042679) for - among others – fresh fruits, especially apples and the Community word/device marks (CTMs No. 4186169 and 6335591 ) you can see below for the same goods. PINK LADY      &            &        


English Pink


Decisions of the Previous Instance By decision of 27 May 2011 the Opposition Division rejected the opposition. On 7 June 2011 the trademark owners filed an appeal with OHIM against the decision of the Opposition Division. In 2012, before adopting the contested decision, the Board of Appeal (BoA) was informed about final judgment of the Belgian CTM Court Tribunal de Commerce de Bruxelles (TCB) cancelling the Benelux mark “ENGLISH PINK“ because of likelihood of confusion with the earlier “PINK LADY“ CTM and Benelux trademarks. The TCB found that the Benelux mark “ENGLISH PINK“ infringes the “PINK LADY“ marks and prohibited the other party from using the sign “PINK LADY“ within the EU. The TCB ruled that the “PINK LADY” CTMs enjoy a high degree of protection and that there is a significant likelihood of confusion between “PINK LADY” and “ENGLISH PINK”. By decision of 29 May 2013 the BoA dismissed the appeal. The court was of the opinion that the marks were not visually, conceptually or phonetically similar and therefore there is no likelihood of confusion. The BoA was also of the opinion that the opponents had failed to establish the reputation of their earlier word mark and had not shown that the public associated “PINK LADY” with them rather than with apples of that variety as produced by any other grower. In reaching its decision, the BoA only referred to the evidence before the Opposition Division. Decision of the Court The EGC annulled, but did not alter the decision of the BoA. First, the EGC came to the result that although the BoA had been duly informed numerous months before the adoption of its decision about the judgment of the TCB, it did not even mention it. According to the EGC, the submission of facts and evidence by the parties remains possible even after the expiry of the time-limits and OHIM is in no way prohibited from taking account facts which are submitted or produced at a later stage. Therefore, the judgment of the TCB was a relevant factual element to be taken into account in this case, especially, in view of the fact that there were essential common points between the elements at issue in the Belgian infringement proceedings and the opposition proceedings: - The parties to both sets of proceedings were identical. - The earlier word mark relied on in support of the infringement proceedings before the TCB was the same as that relied on in support of the opposition proceedings before OHIM. - This judgment was delivered by a CTM court which was established as part of the autonomous system that underlines the European Union's trademark regime. As a result, the EGC is of the opinion that the BoA did not assess all the relevant factual aspects of the case with the required diligence. This lack of diligence was such as to lead to annulment of the BoA’s decision. Finally, the EGC pointed out that the judgment of the TCB is not in itself sufficient to enable the EGC to alter the contested decision. When exercising its exclusive jurisdiction over registration of CTMs and when examining oppositions lodged against CTM applications, the Office is not bound by a decision of a CTM court delivered in an action for infringement. The unitary character of the CTM does not mean that the principle of res judicata precludes the departments of OHIM and, consequently, the European Union Courts, from examining the possible existence of a likelihood of confusion in the context of opposition proceedings concerning the registration of a new CTM, even though it is identical to a national mark which has been held by a CTM court to undermine the earlier CTM.