No safe space for safe skies

21st Jan 2019

Arguments on the window for evidence went unheeded, says Eleni Mezulanik. C-326/18 P, Safe Skies v EUIPO, CJEU, 4th October 2018.

C-326/18 P, Safe Skies v EUIPO, CJEU, 4th October 2018

Key points

• It is settled case law that the only relevant date for the purpose of the assessment in invalidity proceedings is the date of filing of the application for registration of the contested mark 
• It is necessary to draw a distinction between evidence allowing conclusions to be drawn as to the circumstances at the date of registration of the mark at issue and those allowing conclusions to be drawn as to the circumstances at the filing date 
• An appeal lies on points of law only

Safe Skies LLC filed an appeal against a decision of the General Court (GC) relating to invalidity proceedings brought by Safe Skies against Travel Sentry Inc. In support of this appeal, Safe Skies relied on a single ground, alleging infringement of Article 52(1)(a) of Council Regulation (EC) No 207/2009 as amended by Regulation (EU) 2015/2424 (the Regulation).

Relevant date

The GC held that the only relevant date for the purpose of assessing whether there are absolute grounds for refusal in invalidity proceedings is the filing date of the application for registration of the contested mark. In addition, the GC held that the possibility of taking into consideration material dated after the filing of the application for registration reinforces that interpretation. Therefore, the GC excluded from its assessment evidence dated after the filing of the application for registration of the contested mark. 

The Appellant complained that the GC did not take into account evidence dated after the date of filing of the application for registration of the contested mark but before that registration. The Appellant’s arguments claimed that the relevant date for the purpose of assessing whether there are absolute grounds for refusal in invalidity proceedings is the date of registration of the mark at issue. Following Frosch Touristik v OHIM – DSR touristik (FLUGBÖRSE) T189/07, and the case law cited, the only relevant date for the purpose of assessing an application for a declaration of invalidity is the filing date of the contested mark. 

Parallelism principle

The Appellant’s assertion is based on the parallelism between Article 52(1)(a) and Article 7(3) of the Regulation. This dictates that the distinctive character of a mark must have been acquired through use before the filing of the application. As such, an application cannot rely, during the registration procedure, on the distinctive character acquired through use after the filing date. The relevant date for assessing whether there are absolute grounds for refusal is also applicable in invalidity proceedings. It is agreed that the Court could take into account evidence submitted after the filing date to enable it to draw conclusions as to the situation on the date of the application. But this would be provided that it serves to confirm or help to better assess the scope of the use of that mark during the relevant period and confirm the real intentions of the proprietor of that mark during the same period.

While the Appellant argued that, from the inference of the wording of the relevant provisions, EUIPO must also take into account new developments during the period of registration, it was held that this was manifestly unfounded.

The appeal was dismissed as being, in part, manifestly inadmissible and, in part, manifestly unfounded.

Eleni Mezulanik is a Chartered Trade Mark Attorney and Senior Associate at Keltie LLP

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