Opposition proceedings before the EUIPO: a lesson from the General Court

On 16 May 2019, the General Court of the European Union (GC) handed down its judgment in KID-Systeme v EUIPO - Sky (SKYFi) T-354/18.

In this InternKat's opinion, this decision has been an opportunity for the GC to analyze the opposition proceedings before the EUIPO.

But let's take this step-by-step!
 

Background

 
On 2 October 2013, the applicant, KID-Systeme GmbH, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), for the word sign SKYFi in classes 9 and 37. On 18 February 2014,  British Sky Broadcasting Group filed a notice of opposition on the basis, inter alia, of its EU word mark SKY registered on 22 May 214 in classes 9 and 37 and its UK word mark SKY registered on 7 September 2012 in classes 9 and 37. 

The opposition division upheld the opposition, supported also by Article (1)(b) of Regulation 207/2009 while the EUIPO Board of Appeal (BoA) dismissed the appeal against the opposition.

The applicant filed and appeal against the BoA decision's based on eight pleas in law.

The GC rejected all the eight pleas in law. In so doing it had plenty of room to analyze the opposition proceedings before the EUIPO. This Internkat has decided to write about the decision in the form of an 'interview' with the GC.

Analysis

Who has the right to file an opposition and how? 

In limine, the GC recalls that, under Article 46(1)(a) of Regulation 2017/1001, a notice of opposition to registration of a trade mark may be given within a period of three months following the publication of an EU trade mark application, on the grounds that the trade mark may not be registered under Article 8 of that regulation.

The notice of opposition may be given by the proprietor of the rights or a licensee authorised by the proprietors. In the latter case, the notice of opposition is to contain a statement to that effect and indications concerning the authorization or entitlement to file the opposition.

Further, Rule 19(2) of Regulation No 2868/95 stipulates that, within the period set by EUIPO, the opposing party is to file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition. 

Lastly, Rule 20(1) of that regulation provides that if, before the expiry of the period set by EUIPO under Rule 19(1) of that regulation the opposing party has not proven all the elements of Rule 19(2) the opposition shall be rejected as unfounded.

Is the EUIPO bound by the trade mark's order chosen by the party in examining the opposition?

The GC holds that no provisions require EUIPO to examine  the earlier marks on which the opposition is based in the order chosen by the party which filed the opposition.  In TeleTech Holdings, Inc./OHMI - Teletech International (TELETECH INTERNATIONAL) the GC underlines:

it does not follow from that provision that OHIM is required to found the rejection of the trade mark application on all the grounds for refusal of registration put forward in support of the opposition, on the basis of which a trade mark application could be rejected. The aim of opposition proceedings is to give undertakings an opportunity to challenge, by means of one procedural system, applications for Community trade marks which might give rise to a likelihood of confusion with their earlier marks or rights, and not to settle pre-emptively potential conflicts at national or even Community level 

Who has to proof the genuine use and who has not?

Then, the GC underlines that, under Article 47(2) of Regulation 2017/1001, if the applicant requests so, the opposing party has to provide proof that, during the five-year period preceding the date of filing or the date of priority of the EU trade mark application, the earlier EU trade mark has been put to genuine use in the EU for the goods or services in respect of which it is registered and which he uses as a basis for his opposition, or that there are proper reasons for non-use, provided that the earlier EU trade mark has at that date been registered for no less than five years. In the absence of proof to this effect, the opposition is to be rejected.

Where the earlier mark relied on in support of an opposition has been registered for less than five years before the date of filing or the date of priority of the EU trade mark application, proof of genuine use cannot be required. This follows from settled case-law, eg Aldi v EUIPO — Sky (SKYLITe), T‑736/15:

where the earlier mark relied on in support of an opposition is registered for less than five years before the publication of the application for registration of an EU trade mark, proof of genuine use cannot still be required

Is there a presumption of validity of the trade marks in the opposition proceeding?

The GC recalls that, according to the case-law, in the context of opposition proceedings, the EUIPO is required to presume that the earlier mark is valid. This also follows from settled case-law, eg Aldi v EUIPO — Sky (SKYLITe), T‑736/15:

In particular, according to that case-law, in the context of an opposition procedure, EUIPO cannot examine whether a mark fulfils the criteria that constitute an absolute ground for refusal, such as those laid down in Article 7(1) of Regulation No 207/2009 and referred to in Article 52(1)(a) of the regulation.

All this is in contrast with the invalidity procedure. In fact, the aim of the opposition procedure is to give proprietors of rights the possibility of contesting an application for an EU mark on the basis of earlier rights which conflict with it.

Is the EUIPO bound to suspend the opposition proceeding in presence of invalidity proceedings?

The GC holds that, according to Rule 20(7)(c) of Regulation 2868/95, the EUIPO may suspend opposition proceedings where a suspension is appropriate in the circumstances at issue. The BoA's discretion in this area is broad and, in any case, proceedings are not suspended only because a party has requested a suspension. The assessment of the discretion of the BoA to suspend proceedings before it falls inside the scope of review of the Court of Justice of the European Union but this only to ascertaining that no manifest error of assessment or misuse of powers has occurred.