Brussels decision brushed off
Decision shows the limits of res judicata in trade mark matters, writes Daniel Joy. C-226/15 P, Apple and Pear Australia Ltd and Star Fruits Diffusion v EUIPO and Carolus C BVBA (PINK LADY), CJEU, 21 July 2016.
C-226/15 P, Apple and Pear Australia Ltd and Star Fruits Diffusion v EUIPO and Carolus C BVBA (PINK LADY), CJEU, 21 July 2016
This case concerned the principle of res judicata, and whether infringement decisions from the national trade mark courts should be binding in related opposition matters before EUIPO. Res judicata is a legal principle stating that a matter that has been finally decided by a relevant court may not be further contested by the same parties.
Apple and Pear Australia Ltd and Star Fruits Diffusion (the Opponents) opposed Carolus C BVBA’s EU Trade Mark (EUTM) application for ENGLISH PINK in class 31, based on prior EU registrations for PINK LADY. EUIPO dismissed the opposition, and the Opponents filed an appeal.
Annulment decision
Before the appeal decision was handed down, however, the Opponents successfully brought an infringement action against Carolus’s Benelux mark ENGLISH PINK in the Brussels Commercial Court (a competent EUTM court). The Brussels Court annulled Carolus’s Benelux mark and ordered that it stop using the mark in the EU.
The Opponents alerted EUIPO to the Brussels Court decision, expecting that it would affect the outcome of the opposition appeal proceedings. However, the EUIPO Fourth Board of Appeal (BoA) rejected the appeal as it considered that the marks were not sufficiently similar.
The Opponents applied to the General Court (GC) seeking annulment or alternation of the BoA’s decision on the grounds that, by not taking into consideration the judgment of the Brussels Court: (i) the BoA did not adhere to the principle of res judicata; and (ii) the decision was contrary to the principles of legal certainty. The GC found that the decision of the BoA should be annulled because it did not take account of the Brussels Court’s decision. It did not, however, order an alteration to that decision based on the principle of res judicata.
The Opponents – now Appellants – appealed, claiming that the GC “committed an error of law” in finding that it could not order the alteration. Furthermore, they argued that the GC failed to give effect to the principle of res judicata.
In its findings, the GC acknowledged that there is no provision in Council Regulation (EC) No 207/2009 (EUTMR) expressly stating that EUIPO is bound by EUTM court decisions in infringement matters. However, the overarching purpose of the EUTMR and the EUTM system is to encourage harmonised protection of rights throughout the EU.
Nonetheless, it is understood that court decisions from Member States – and EUIPO decisions that have become final – can give rise to res judicata provided that the proceedings have the same parties, subject matter and causes of action.
In the present matter, the GC accepted that the parties were the same, but found that the subject matter and causes of action were not the same. The matter before the Brussels Court concerned a Benelux mark, whereas the one at issue involved an EUTM for ENGLISH PINK. Therefore, res judicata did not apply.
Strict interpretation
The appeal was rejected on the basis that the GC did not err in finding that res judicata did not require that the BoA be bound by the Brussels Court decision. This shows how strictly res judicata is interpreted, but also how opposition and invalidity proceedings are treated as being separate to infringement matters.
Daniel Joy is a registered Trade Mark Attorney in Baker & McKenzie’s IP team
Daniel works on national and international trade mark matters for a wide range of clients.