This post is a case review of C-326/18P_CO – Safe Skies v EUIPO (EU trade mark – Order) – 04 October 2018.

Safe Skies LLC filed an appeal against the decision of the General Court 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 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21) (‘Regulation No 207/2009’).

The General Court held that the only relevant date for the purpose of assessing whether there are absolute grounds for refusal in invalidity proceedings is that of the filing of the application for registration of the contested mark. In addition, the General Court held that the possibility of taking into consideration material dated after the filing of the application for registration reinforces it. Therefore, the General Court excluded from its assessment evidence dated after the fling of the application for registration of the contested mark as the evidence contained material that did not concern the situation at that date.

The Appellant complained that the General Court 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. It was held that on the basis of the Appellant’s arguments it 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 judgment of 3 June 2009, Frosch Touristik v OHIM — DSR touristik (FLUGBÖRSE), T‑189/07, EU:T:2009:172, paragraphs 18 and 19 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. This is based on the parallelism between Article 52(1)(a) and Article 7(3) of the Regulation. This is because 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. Although, it is agreed that the Court could take into account evidence filed after the filing date to enable the drawing of conclusions on the situation as it was on the date of the application provided that it only serves to confirm or better assess the scope of the use of that mark during the relevant period as well as confirm the real intentions of the proprietor of that mark during the same period.

Whilst the Appellant argued that from the inference from the wording of the relevant provisions, the 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.

Comments:

• 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.

Eleni Mezulanik 6 March 2019