Provisional text

Case T‑77/15

(publication by extracts)

Tronios Group International BV

v

European Union Intellectual Property Office

(EU trade mark — Invalidity proceedings — EU word mark SkyTec — Earlier national word mark SKY — Relative ground for refusal — Limitation in consequence of acquiescence — Article 54(2) of Regulation (EC) No 207/2009 — Likelihood of confusion — Article 8(1)(b) of Regulation No 207/2009)

Summary — Judgment of the General Court (Fourth Chamber), 20 April 2016

1.      EU trade mark — Surrender, revocation and invalidity — Limitation through acquiescence — Limitation period — Point from which time starts to run

(Council Regulation No 207/2009, Art. 54(2))

2.      EU trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal — Re-examination of the facts in the light of evidence not previously submitted before EUIPO bodies — Not included

(Council Regulation No 207/2009, Arts 65(2), and 76(1))

1.      Four conditions must be satisfied before the period of limitation in consequence of acquiescence starts running if there is use of a later trade mark identical to the earlier trade mark or confusingly similar. First, the later trade mark must be registered; second, the application must have been made in good faith by its proprietor; third, the later trade mark must be used in the Member State where the earlier trade mark is protected; fourth, the proprietor of the earlier trade mark must be aware of the use of that trade mark after its registration.

The purpose of Article 54(2) of Regulation No 207/2009 on the EU trade mark is to penalise the proprietors of earlier marks who have acquiesced in the use of a later European Union trade mark registered for a period of five successive years, while being aware of such a use, by excluding them from seeking a declaration of invalidity or from bringing opposition proceedings in respect of that trade mark. That provision is intended to strike a balance between the interests of the proprietor of a mark in safeguarding its essential function and the interests of other economic operators in having signs capable of denoting their goods and services. That objective implies that, in order to safeguard that essential function, the proprietor of an earlier trade mark must be in a position to oppose the use of a later mark identical or similar to his own. It is only once the proprietor of the earlier trade mark becomes aware of the use of the later European Union trade mark that it has the option of not acquiescing in its use and, therefore, opposing it or seeking a declaration of invalidity of the later trade mark and that, consequently, the period of limitation in consequence of acquiescence starts running.

It follows therefore from a teleological interpretation of Article 54(2) of Regulation No 207/2009 that the relevant date from which the period of limitation in consequence of acquiescence starts running is when the proprietor becomes aware of the use of the later mark.

That interpretation requires the proprietor of the later mark to submit evidence of an actual awareness of the use of that mark by the proprietor of the earlier mark, failing which the latter would not be able to oppose the use of the later mark. In this respect, it is necessary to take into account the similar rule on limitation in consequence of acquiescence contained in Article 9(1) of Directive 89/104 on trade marks, replaced by Article 9(1) of Directive 2008/95 on trade marks, a rule in relation to which the eleventh recital in the preamble to Directive 89/104/EC (Recital 12 to Directive 2008/95) states that the claim of limitation in consequence of acquiescence is applicable where the proprietor of the earlier trade mark ‘has knowingly tolerated the use for a substantial length of time’, in other words ‘intentionally’ or ‘in full knowledge of the facts’. It must be noted that this assessment applies mutatis mutandis to Article 54(2) of Regulation No 207/2009, the wording of which corresponds to that of Article 9(1) of Directives 89/104 and 2008/95.

(see paras 30-33)

2.      See the text of the decision.

(see para. 36)