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This is exactly what the European Union Intellectual Property Office (the “EUIPO”) must clarify following the judgment issued on February 1 by the Third Chamber of the European Union General Court (the “EGC”) which, upholding the appeal by the American tobacco company Philip Morris, cancels the decision by the EUIPO’s Board of Appeal denying the reputation of the cigarette packets of its main trademark, Marlboro.

The dispute brought before the EGC arose from the application for a declaration of invalidity of a figurative mark requested for tobacco products that, among other clearly differentiating elements, included in the top part of the mark a dark-colored geometric shape similar to the ‘roof top’ shape used on Marlboro packets.

Both the EUIPO’s Cancellation Division and, later, its Board of Appeal dismissed the declaration for invalidity requested by Philip Morris, considering that it had not sufficiently proved the reputation of the graphic element used on the distinctive cigarette packets, essentially because the evidence aimed at proving this degree of knowledge was not submitted within the deadline.

However, based on the knowledge and existence of a previous resolution by the EUIPO in which, in the framework of a third proceeding, the “considerable reputation” of the Marlboro mark was recognized, as well as on the graphic element with a “roof top” shape, the EGC ruled that, in application of the principle of sound administration and in the absence of the defenselessness for the trademark’s applicant, the EUIPO should have assessed the evidence submitted, even if outside of the deadline, given that there was an indication that the evidence submitted could be relevant to resolve the dispute.

The EGC clearly states “the broad discretion enjoyed by the EUIPO in the performance of its duties cannot exempt it from its duty to assemble all the elements of fact and law necessary for the exercise of its discretion in cases where the refusal to take account of certain evidence submitted late would breach the principle of sound administration.”

However, this judgment does not assess whether the challenged trade mark must be annulled or not, focusing on the alleged degree of similarity and possibility for confusion between the signs being contested, limiting itself to urging the Board of Appeal to assess the evidence initially rejected and to resolve the case based on that.

We will follow the resolution of this case closely.

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