Apple and Pear Australia Ltd and Star Fruits Diffusion v EUIPO and Carolus C. BVBA

It has all gone rather pear-shaped for Apple and Pear Australia Limited and Star Fruits Diffusion (the Appellants), as the CJEU (decision in Case C‑226/15 P, found here) upholds a decision of the General Court and concludes that the EUIPO is not bound by a judgment of a Belgian Court. The dispute started back in 2009 when Carolus C. filed an application to register an EUTM for ENGLISH PINK for agricultural products and fresh fruits (amongst other products). An identical mark was also filed in Benelux on the same day and was subsequently granted. The EUTM application was opposed by the Appellants on the basis of their earlier EUTMs for the plain word mark PINK LADY and stylised versions of the words PINK LADY. The EUIPO Opposition Division rejected this opposition and the Appellants appealed to the Board of Appeal. Around the same time, the Commercial Court in Brussels, in its capacity as an EU trade mark court, handed down a decision to an infringement action brought by the Appellants against Carolus C’s use of ENGLISH PINK. The Commercial Court annulled the Benelux mark for ENGLISH PINK and ordered a pan-EU injunction against Carolus C.’s use of ENGLISH PINK in the EU. The Appellants informed the EUIPO Board of Appeal that Carolus C. had accepted this judgment and it had become final. The Board of Appeal dismissed the Appellant’s appeal against the Opposition Division’s decision, finding no visual, aural or conceptual similarity between the marks and no likelihood of confusion. The Board of Appeal also did not mention the decision of the Brussels Commercial Court. The Appellants appealed to the General Court, primarily requesting that the Board of Appeal decision be altered or annulled. The General Court annulled the decision because the Board of Appeal did not take into account the judgment of the Commercial Court in Brussels and had not assessed the potential impact this judgment could have on the outcome of the opposition. However, on the basis that there were technical differences between an opposition and infringement proceeding, the General Court did not agree that the Appellants could argue that the decision of the Commercial Court of Brussels was res judicata in the context of the EUIPO opposition proceedings. The Appellants appealed this point regarding res judicata to the CJEU. The CJEU confirmed the findings of the General Court that the subject matter of any proceedings before EUIPO relating to registration of an EU trade mark or opposition to that registration are different from any proceedings before a national court, even where that court acts as an EU trade marks court. The CJEU did not find that the infringement and opposition proceedings concerned the same subject matter, and dismissed the appeal. This case is interesting, especially noting the unitary nature of the EUTM and the fact that the legal tests that are applied in infringement and opposition proceedings are very similar. Despite this, whilst we can appreciate that infringement proceedings are not opposition proceedings, the practical consequence of this decision is that the EUTM for ENGLISH PINK will be allowed registration for agricultural products and fresh fruits but there is a final decision issued by an EUTM court restraining the use of ENGLISH PINK throughout the EU in relation to these very products. This apparent inconsistency serves as a reminder that use and registration of a mark are two distinct concepts - owning a registration can be a powerful tool for enforcement, even without use (for a limited time). In this case, whilst Carolus C. will be unable to use the mark, they are able to keep the registration and will be able to enforce this against third parties for at least the first five years before the grace period runs out.

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