Earlier dates don't mean earlier rights

23rd Apr 2019

Catherine Byfield reports on a failed attempt to beat the clock. T-287/17, Swemac Innovation AB v EUIPO, CJEU, 7th February 2019.

Earlier dates don't mean earlier rights

T-287/17, Swemac Innovation AB v EUIPO, CJEU, 7th February 2019

Earlier dates don’t mean earlier rights

Key points

  • In respect of Article 8(4), applicants for invalidity or opposition must set out not only that they satisfy the necessary conditions under national law that they rely on, but also the content of that law 
  • Coexistence on the market can reduce the likelihood of confusion, providing the marks concerned are identical. However, it is necessary to demonstrate this by way of evidence 
  • The registered proprietor was held to have failed to prove coexistence of the signs at issue or that the Swedish public did not confuse those signs when faced with them

In 2008, Swemac Innovation AB (SI AB) registered SWEMAC for surgical and medical apparatus and related research and development services. The registration was later invalidated on the basis of a Swedish company name, SWEMAC Medical Appliances AB (the Earlier Sign), registered in 1997 for development, manufacture and sale of medical apparatus and equipment. This application was rejected, as it had not been proved that the Earlier Sign was of more than mere local significance, and therefore it did not fulfil the conditions of Article 8(4) of Regulation (EU) 2017/1001. 

On appeal, additional evidence was submitted regarding the use of the Earlier Sign. The Board of Appeal (BoA) upheld the appeal, finding Article 8(4) satisfied, a likelihood of confusion and no establishment of coexistence, and rejecting SI AB’s submission on acquiescence. 

Fresh evidence

In this General Court (GC) appeal by SI AB, it advanced two pleas. Crucially, SI AB claimed that it had a company name, Swemac Orthopaedics AB, and an unregistered trade mark, SWEMAC, that predated the Earlier Sign. On appeal to the GC, it sought to evidence this, as well as coexistence of the signs at issue and that there was no likelihood of confusion. These documents were submitted for the first time and were therefore held to be inadmissible. 

The GC held that there is no provision to assess whether the registered proprietor did in fact have an earlier right predating the Earlier Sign. This would be a matter for national courts in cancellation proceedings.

SI AB submitted that the relevant public were highly skilled and informed users, such as surgeons and medical institutions, and the goods and services expensive. Therefore, an exceptional level of attention would be applied in selecting them. It also argued, against likelihood of confusion, the alleged prior peaceful coexistence between the parties. 

The GC found that SI AB had failed to prove coexistence or that the Swedish public did not confuse the signs when faced with them. Given the identity and similarity of the goods and services, and the similarity of the marks, there must be a likelihood of confusion, even taking into account a high level of attention.  

SI AB further argued that the BoA erred in its assessment of acquiescence. It contended that it should be assessed in relation to “implied informed consent”, rather than date of registration, and that the two parties resulted from a split of an original company, Swemac Orthopaedics, and had worked on the same premises for 10 years. 

The GC reiterated the requirements for acquiescence, especially that there must be knowledge of the use after the mark is registered. As the five-year clock does not start ticking until after registration, there could not be acquiescence where the registration was less than five years old. The appeal was dismissed.

Final word

Although there are no surprises here, it is useful to remember that the timely filing of evidence can be key, and that there is no scope to “beat” the date of an earlier right in invalidity proceedings.

Catherine Byfield is a Senior Chartered Trade Mark Attorney at Stobbs

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