Judgment of the General Court (Fourth Chamber) of 13 May 2020 –
Peek & Cloppenburg v EUIPO — Peek & Cloppenburg (Peek & Cloppenburg)
(Case T‑446/18)
(EU trade mark — Opposition proceedings — Application for the EU word mark Peek & Cloppenburg — Earlier national commercial designation Peek & Cloppenburg — Relative ground for refusal — Likelihood of confusion — Article 8(4) of Regulation (EU) 2017/1001 — Coexistence of the national commercial designation and the mark applied for — Demarcation agreement — Application of national law by EUIPO — Suspension of the administrative proceedings — Article 70 of Regulation 2017/1001 — Rule 20(7)(c) of Regulation (EC) No 2868/95 (now Article 71(1) of Delegated Regulation (EU) 2018/625) — Manifest error of assessment)
1. Judicial proceedings — Application initiating proceedings — Formal requirements — Brief summary of the pleas in law on which the application is based — Pleas in law not set out in the application — General reference to other documents — Inadmissibility
(Statute of the Court of Justice, Arts 21, first para. and 53, first para.; Rules of Procedure of the General Court, Art. 177(1)(d))
(see paras 29, 30)
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 — Precluded
(European Parliament and Council Regulation 2017/1001, Art. 72)
(see para. 39)
3. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade — Conditions — Interpretation in the light of EU law — Assessment by reference to the criteria determined by the national law governing the sign relied on
(European Parliament and Council Regulation 2017/1001, Art. 8(4))
(see paras 53-55)
4. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade — Review by the competent bodies of EUIPO and by the Court as to the national law applicable — Scope
(European Parliament and Council Regulation 2017/1001, Arts 8(4) and 72(1) and (2))
(see paras 68, 78-82)
5. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade — Sign giving its holder the right to prohibit the use of a more recent trade mark — Burden of proof
(European Parliament and Council Regulation 2017/1001, Art. 8(4)(b); Commission Regulation No 2868/95, Art. 1, rule 37)
(see paras 70, 77, 83, 85)
6. EU trade mark — Procedural provisions — Examination of the facts of the EUIPO’s own motion — Opposition proceedings — Examination restricted to the facts, evidence and arguments provided — Assessment by the Office of the correctness of the facts pleaded and the probative value of evidence submitted — Scope
(European Parliament and Council Regulation 2017/1001, Art. 95)
(see para. 84)
7. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade – Word mark and commercial designation Peek & Cloppenburg
(European Parliament and Council Regulation 2017/1001, Art. 8(4))
(see paras 87-94, 97, 101, 104)
8. EU trade mark — Appeals procedure — Appeals before the Boards of Appeal — Stay of proceedings — Conditions
(Commission Regulation No 2868/95, Art. 1, rules 20(7)(c) and 50(1))
(see paras 114-116)
9. EU trade mark — Appeals procedure — Appeals before the Boards of Appeal — Stay of proceedings — Discretion of the Board of Appeal — Prima facie examination of the chances of success of a counterclaim for the declaration of a right — Scope
(Commission Regulation No 2868/95, Art. 1, rules 20(7)(c) and 50(1))
(see paras 118, 120-123, 125)
Re:
| Action brought against the decision of the First Board of Appeal of EUIPO of 20 April 2018 (Case R 1589/2007-1), relating to opposition proceedings between Peek & Cloppenburg (Hamburg) and Peek & Cloppenburg (Düsseldorf)). |
Operative part
The Court:
2. | | Orders Peek & Cloppenburg KG (Düsseldorf) to pay the costs. |