THE CJEU CASTS LIGHT ON THE RELEVANT DATE IN ORDER TO ASSESS THE EXISTENCE OF ABSOLUTE GROUNDS

Return to News — Monday 05 November — 2018 byErnesto Cebollero
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Last October 4 by means of its Order in case C-326/18 P - Safe Skies/EUIPO the Court of Justice of the European Union (CJEU hereinafter) put an end to the dispute that confronted since 2014 the US based companies Travel Sentry, Inc. (TRAVEL SENTRY), advised by BAYLOS, and Safe Skies LLC. (SAFE SKIES) dispute that brought cause of the invalidity action filed by SAFE SKIES against the EUTM registration no. 004530168 of TSA LOCK (wordmark) that covers the following products:

.-Class 6: Metal locks (for luggage);
.-Class 18: ‘Bags; backpacks, canvas backpacks, athletics bags, carry-on bags, gym bags, travel bags, beach bags, briefcases, purses, suitcases, trunks, luggage, straps for luggage, waist packs, and wallets’;
.-Class 20: Non-metal locks (for luggage).

In particular, the said action was based on Article 52(1)(a) of Regulation 207/2009 (now Article 59(1)(a) of Regulation 2017/1001), read in conjunction with Article 7(1)(b), (c), (d), (g) and (i) of that regulation (now Article 7(1)(b), (c), (d), (g) and (i) of Regulation 2017/1001), in respect of all the goods referred to above.

The question under debate was in essence whether in order to assess the existence of absolute grounds for refusal in the context of invalidity proceedings, the relevant date would be that of filing of the contested registration or if, as claimed by SAFE SKIES, the period going from the filing to the registration date would also need to be considered.
The above was paramount for the merits since, in order to substantiate its action, SAFE SKIES had filed several documents dated after the filing date, but before the registration one.

On the instance the General Court sided with TRAVEL SENTRY concluding that the sole relevant date for assessing whether there are absolute grounds for refusal in invalidity proceedings is that of the filing of the application for the contested mark, adding that, as a matter of fact, the fact that the case-law allows subsequent material to be taken into account, far from weakening that interpretation of Article 52(1)(a), reinforces it, since that taking into account is only possible where that material relates to the situation at the date of filing of the trade mark application.

The CJEU, following the opinion of Advocate General Mengozzi confirmed the GC´s decision and held that although it is true that in its order of 5 October 2004, Alcon v OHIM it was agreed that the General Court could take account of material which, despite post-dating the filing of the application for registration of the mark at issue, enabled the drawing of conclusions on the situation as it was on the date of the application, it was likewise made clear that doing so served only to confirm or better assess the scope of the use of that mark during the relevant period, as well as the real intentions of the proprietor of that mark during the same period.

In those circumstances, as mentioned in the preceding lines, the General Court was fully entitled to consider that the fact that the case-law allows material subsequent to the filing of the application for registration of the contested mark to be taken into account, far from weakening the interpretation that the only relevant date for assessing whether there are absolute grounds for refusal in invalidity proceedings is that of the filing of the application, reinforces it.

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