Case T‑287/17
Swemac Innovation AB
v
European Union Intellectual Property Office
Judgment of the General Court (Ninth Chamber), 7 February 2019
(EU trade mark — Invalidity proceedings — EU word mark SWEMAC — Earlier national company name or trade name SWEMAC Medical Appliances AB — Relative ground for refusal — Limitation in consequence of acquiescence — Article 53(1)(c) of Regulation (EC) No 207/2009 (now Article 60(1)(c) of Regulation (EU) 2017/1001) — Likelihood of confusion — Article 54(2) of Regulation No 207/2009 (now Article 61(2) of Regulation 2017/1001) — Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001) — Evidence presented for the first time before the General Court)
1. EU trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Re-evaluation of the facts in the light of evidence produced for the first time before it — Not included
(Council Regulation No 207/2009, Art. 65)
(see paragraph 18)
2. EU trade mark — Appeals procedure — Action before the EU judicature — Legality of the decision of a Board of Appeal — Account taken, for the purposes of applying EU law, of national legislation, case-law or academic writing — Lawfulness
(Council Regulation No 207/2009, Art. 65)
(see paragraph 20)
3. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an earlier right referred to in Article 8(4) of Regulation No 207/2009 — Conditions — Interpretation in the light of EU law — Assessment by reference to the criteria determined by the national law governing the sign relied on
(Council Regulation No 207/2009, Arts 8(4) and 53(1)(c))
(see paragraphs 35-37)
4. EU trade mark — Surrender, revocation and invalidity — Invalidity action based on the existence of an earlier national right — Burden of proof
(Council Regulation No 207/2009, Arts 8(4), 53(1)(c) and 56; Commission Regulation No 2868/95, Art. 1, Rule 37(b)(ii))
(see paragraphs 38-40)
5. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Use of the mark capable of being prohibited by virtue of another earlier right — Review by the competent bodies of EUIPO and by the Court as to the national law applicable — Establishment of the content of the national legislation
(Council Regulation No 207/2009, Arts 8(4), 53(1)(c)) and 65(1) and (2))
(see paragraphs 41-43)
6. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an earlier right referred to in Article 8(4) of Regulation No 207/2009 — Conflict between the earlier right, a registered company name and another non-registered national company name or trade mark — Jurisdiction of the General Court
(Council Regulation No 207/2009, Arts 8(4) and 53(1)(c))
(see paragraphs 52-58)
7. National law — Reference to national law — Swedish law – Trade mark law
(see paragraph 60)
8. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an earlier right referred to in Article 8(4) of Regulation No 207/2009 — Word mark SWEMAC and company name SWEMAC Medical Appliances AB
(Council Regulation No 207/2009, Arts 8(4) and 53(1)(c))
(see paragraphs 61-66)
9. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an identical or similar earlier mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Coexistence of earlier marks on the market — Effect
(Council Regulation No 207/2009, Arts 8(1)(b) and 53(1)(a))
(see paragraph 74)
10. 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))
(see paragraphs 83-85)
11. EU trade mark — Surrender, revocation and invalidity — Limitation through acquiescence — Concept
(Council Regulation No 207/2009, Art. 54(2))
(see paragraphs 90, 91)
Résumé
In the case that gave rise to the judgment of 7 February 2019, Swemac Innovation v EUIPO — SWEMAC (T‑287/17), the proprietor of the European Union trade mark SWEMAC lodged with the General Court an application for annulment of the decision of the Board of Appeal declaring that trade mark invalid due to the existence of an earlier sign, namely, the earlier Swedish company name Swemac Medical Appliances AB.
The case raises in particular the question whether, as the applicant claims, the fact that the applicant could rely on a right even older than the earlier sign would mean that the applicant for a declaration of invalidity, who is the proprietor of the earlier sign, would not be entitled to prohibit the use of a later EU trade mark, such that the condition laid down in Article 8(4)(b) of Regulation No 207/2009 (1) would not be fulfilled.
In that regard, the Court notes that, according to the case-law, where the proprietor of the contested EU trade mark has an earlier right capable of invalidating an earlier mark on which an application for a declaration of invalidity is based, it is for him to contact the competent authority or national court, as the case may be, to secure the cancellation of that mark, if required.
In addition, it recalls the case-law established in the context of opposition proceedings, according to which the fact that the proprietor of a contested trade mark is the proprietor of an even earlier national trade mark does not in itself have any bearing in so far as opposition proceedings at EU level are not intended to regulate conflicts at national level.
According to the case-law, the validity of a national trade mark, in this case the intervener’s, may not be called in question in proceedings for registration of an EU trade mark, but only in cancellation proceedings brought in the Member State concerned. Moreover, although it is for the European Union Intellectual Property Office (EUIPO) to ascertain, on the basis of evidence which it is up to the opponent to produce, the existence of the national mark relied on in support of the opposition, it is not for it to rule on a conflict between that mark and another mark at national level, such a conflict falling within the competence of the national authorities.
According to the case-law, therefore, as long as the earlier national mark is in fact protected, the existence of a national registration or another right predating that former mark is irrelevant in the context of opposition to an EU trade mark application, even if the EU trade mark applied for is the same as a national trade mark held by the applicant or another right predating the national mark on which the opposition is based.
The Court notes that it has already had occasion to hold that, even if rights over earlier domain names may be treated in the same way as an earlier national registration, in any event, it is not for it to rule on a conflict between an earlier national trade mark and rights over earlier domain names, as such a conflict does not come within the jurisdiction of the Court.
The Court considers it appropriate to apply that case-law by analogy to the present case. In that regard, it notes that, notwithstanding the obligations to which EUIPO is subject and the role of the Court, it must be stated that it is neither for EUIPO nor for the Court to settle a conflict between the earlier sign and another company name or non-registered national trade mark in invalidity proceedings against an EU trade mark.
According to the Court, it follows that the issue of the earlier right is examined by reference to the registration of the contested EU trade mark, and not by reference to the alleged earlier rights that the proprietor of the contested EU trade mark — in this case, the applicant — might have in respect of the applicant for a declaration of invalidity, proprietor of the earlier sign. Therefore, the only earlier right to be taken into consideration for the resolution of the dispute is the earlier sign.