Res judicata attached to national CTM court's judgment not binding on OHIM

European Union

In Apple and Pear Australia v Office for Harmonisation in the Internal Market (OHIM) (Case T-378/13), the General Court has annulled a decision of the Fourth Board of Appeal of OHIM in which the latter had found that there was no likelihood of confusion between the marks PINK LADY and ENGLISH PINK.

On April 20 2010 Apple and Pear Australia and Star Fruits Diffusion filed an opposition under Articles 8(1)(b) and 8(5) of the Community Trademark Regulation (207/2009) against Carolus C BVBA’s application for the registration of the Community trademark (CTM) ENGLISH PINK in Class 31 of the Nice Classification, which covers, among other things, fresh fruit. The opposition was based on three earlier CTMs, in particular the word mark PINK LADY, which was also registered for goods in Class 31; the registration covered fruits, among other things, and, more specifically, apples and apple trees.

On May 27 2011 the Opposition Division of OHIM rejected the opposition and, on May 29 2013, the Fourth Board of Appeal confirmed that decision. Both the Opposition Division and the Board of Appeal considered that the marks were visually, conceptually and phonetically dissimilar; they held that there was no likelihood of confusion and that there was insufficient evidence concerning the alleged reputation of the mark PINK LADY.

Meanwhile, in parallel to the opposition proceedings before OHIM, on June 8 2010 Apple and Pear Australia and Star Fruits Diffusion initiated infringement proceedings before Belgium’s only CTM court, the Brussels Commercial Court, against Carolus' Benelux mark, ENGLISH PINK, based on their earlier CTMs and their Benelux mark. On June 28 2012 the Brussels Commercial Court found that the particular expression ‘pink lady’ conferred a highly-regarded reputation on a particular variety of apples. Taking into account the identity of the products and the high degree of protection to be given to the reputed mark, the Commercial Court found that there was a likelihood of confusion between ENGLISH PINK and PINK LADY for the average, attentive consumer. The Commercial Court issued a European cross-border injunction and ordered Carolus to refrain from using the Benelux mark ENGLISH PINK in the European Union. Carolus acquiesced in the judgment, which thus became final.

The parties were thus confronted with two contradictory decisions, based on the same legal provisions and concerning the same marks.

As a result, the proprietors of the PINK LADY mark appealed to the General Court, stating that the Board of Appeal of OHIM, by not taking into account a CTM court’s judgment, had infringed Article 75 of the regulation. In reply, OHIM stated that it was not bound by the Brussels Commercial Court's judgment, since the CTM regime is an autonomous system with its own objectives and rules, and thus independent of any national system. In addition, the respective claims examined by the Brussels Commercial Court and OHIM were similar, but not identical. The action for infringement before the Belgian court sought annulment of the Benelux mark ENGLISH PINK and an order to refrain from using that mark, whilst the proceedings before OHIM concerned an opposition to the registration of the CTM ENGLISH PINK.

The General Court stated that the Board of Appeal had:

  1. infringed Article 75 of the regulation by failing to refer in its decision to the existence of the Brussels Commercial Court’s judgment and the potential impact of that judgment on the dispute’s outcome; and
  2. failed in its duty of diligence by failing to assess, with all the required care, the relevant factual aspects that had been submitted to it.

The General Court annulled the contested decision but refused to alter it, because it was not in a position to determine, on the basis of the established matters of fact and law, which decision the Board of Appeal was required to take.

More importantly, the General Court stressed again that the CMT regime is an autonomous system, made up of a set of rules pursuing objectives specific to it and so its application was independent of any national system. It followed that a refusal to register must be assessed solely on the basis of the relevant EU legislation and that earlier decisions by national courts could not, in any event, cast doubt on the lawfulness of the decision at issue (Emram v OHIM (Case C-354/11 P)).

In other words, although OHIM should have taken the judgment of the Belgian CTM court into consideration, it was not bound by the latter’s decision. The principle of res judicata did not apply in this situation as OHIM was the only body to examine applications for registration and, accordingly, to authorise or refuse a CMT registration. A CTM court, such as the Brussels Commercial Court, must stay proceedings under Article 104(1) of the regulation only in the case of pending validity proceedings before OHIM.

In the present case, it is doubtful whether the Board of Appeal of OHIM will identify any impact resulting from the Brussels Commercial Court’s judgment – whose motivation is unclear – on its decision in the pending opposition proceedings. After all, the Board of Appeal was granted a wide discretion under Article 76(2) of the regulation to decide, while giving reasons for its decision, whether or not to take such information into account; the applicants could not, in principle, add new evidence concerning the reputation of PINK LADY with respect to a variety of apples (see Centrotherm (Case C-610/11 P) and OHIM v Kaul (Case C-29/05 P)). This outcome clearly shows the difference between a 'paper battle' before OHIM and a 'factual battle' before the CTM courts.

The question of who prevails between OHIM and the CTM courts remains undecided as, on the one hand, the mark ENGLISH PINK is likely to survive the opposition proceedings and be registered as a CTM but, on the other hand, the Brussels Commercial Court’s judgment states that the mark cannot be used in the European Union under penalty of €5,000 per infringement.

Paul Maeyaert, ALTIUS, Brussels

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