On March 25, 2015 in case T-378/13 (Apple and Pear Australia Ltd and Star Fruits Diffusion v OHIM, Carolus C. BVBA), the Fourth Chamber of the General Court of the European Union handed down an important decision in relation to the necessity for the Board of Appeal to state the reason of a judgment according to Art. 75 of Regulation n. 207/2009 (“CTMR”) and, secondly, in relation to the applicability of the well known principle of res judicata relating to national court’s decisions.
Back in October 2009, Carolus applied to register as a Community trade mark (“CTM”) the word sign ‘English pink’ for ‘agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt’ in class 31. In April 2010, the companies Apple and Pear and Star Fruits Diffusion ('the opponents') challenged this mark's registration for all the goods for which registration was sought. Specifically, the opponents relied on three earlier CTMs for goods in class 31:
(i) the word mark “PINK LADY”; (ii) the figurative mark (Click here to view image) , and (iii) a figurative mark (Click here to view image) , all inter alia registered for ‘agricultural, horticultural products, including fruit, grains, plants and trees, in particular apples and apple trees’.
According to the opponents there was a likelihood of confusion of the relevant consumers under Article 8(1)(b) CTMR on the Community trade mark on the grounds of the similarity of 'English pink' to their marks and the identical nature of the parties' respective goods; additionally, given the reputation of the earlier trade marks, the use by Carolus of the term ‘English pink’ would have taken advantage of their earlier marks under Article 8(5) CTMR.
The Opposition Division rejected the opposition, so the opponents appealed to the OHIM Board of Appeal.
In the meantime and prior to the Boards’ decision, the opponents successfully sued Carolus before the Tribunal de commerce de Bruxelles, in its capacity as a Community trade mark court, relying on their earlier Community marks and a further Benelux mark. On June 28, 2012, the national Belgian court annulled the Benelux mark “English Pink” and ordered Carolus to stop using that mark throughout the European Union. The opponents sent OHIM a copy of that judgment and, in August 2012, informed OHIM that Carolus had accepted that judgment, which had accordingly become final.
In May 2013, the Board of Appeal dismissed the prior appeal and held that, since the marks were not visually, conceptually or phonetically similar, there was no likelihood of confusion. In reaching its decision the Board only referred to the evidence before the Opposition Division, without taking into consideration the interim national decision.
The opponents applied to the General Court for the annulment of the decision of the Board of Appeal or for it to be altered. This application was based on the failure of the Board of Appeal to take account of the judgment of the Tribunal de commerce de Bruxelles and on the application of the principle of res judicata.
In delivering its decision, the General Court ruled that the contested decision should be annulled, but however it could not be altered.
Firstly, the General Court found that the Board of Appeal had been duly notified several months before the adoption of its decision that the judgment of the Tribunal de commerce de Bruxelles. However, nowhere in its decision did the Board even mention to the existence of that judgment, nor give reasons for its assessment of it. OHIM's argument that “the Board of Appeal in all likelihood did take account of the judgment” but “did not consider itself to be bound by it as it arose from an action for trade mark infringement” was a deferred attempt to state reasons for its decision, inadmissible before the General Court.
According to the General Court, the submission of facts and evidence by the parties remains possible even after the expiry of the time-limits and OHIM is in no way prohibited from taking account of facts which are submitted or produced late. Consequently, the judgment of the Belgian court was a relevant factual element for resolving the case at hand, in view of the fact that there were essential common points between the elements at issue in the Belgian infringement proceedings and the opposition proceedings: the parties to both proceedings were the same and the earlier word mark relied on in support of the infringement proceedings before the Belgian court was the same as that relied on in support of the opposition proceedings before OHIM. Moreover, this judgment was delivered by a Community trademark court which was established as part of the autonomous system that is the European Union's trade mark regime.
With reference to the failure to apply the res judicata principle, the court ruled that such principle was not applicable in the case in re as the legality of decisions of the Boards of Appeal must be evaluated solely on the basis of the CTMR’s provisions and not on the basis of earlier judicial decisions, including national judicial decisions. It followed that a refusal to register must be assessed solely on the basis of the relevant Union legislation, but earlier decisions by national courts could, in any event, cast doubt on the lawfulness of the decision at issue. In this view, the CTMR does not contain any provision by which OHIM is bound by a decision by a Community trademark court delivered in an action for infringement when it exercises its exclusive jurisdiction over registration of CTMs and when it examines oppositions lodged against applications to register CTMs.
Consequently, the General Court agreed that the decision of the Board of Appeal should be annulled for infringement of Article 75 CTMR on statement of reasons.