Introduction

In the recent decision of the EUIPO Board of Appeal in the cancellation case between Enovation Brands Inc (“the Proprietor”) and Advance Magazine Publishers Inc (“the Cancellation Applicant”), the Board was asked to decide whether a new defence/evidence could be raised at the appeal stage if it could serve to shed light on matters arising earlier in the proceedings.

Background

Having lost at first instance, Enovation Brands Inc sought to appeal a decision which invalidated its EU Trade Mark registration for VOGA (“contested mark”), registered in 2006 covering:

• alcoholic beverages (except beers) in class 33.

The invalidity action was brought by Advance Magazine Publishers Inc on the basis of Article 8(1) and the similarity of the contested mark to their earlier EU Trade Mark registration for VOGUE, filed in 2004 and registered in 2015 covering:

• Temporary accommodation services; boarding for animals; hotel, bar, café, restaurant and nightclub services; provision of food and drink; catering; nursery and crèche services; rental of chairs, tables, table ware and catering equipment; information, advice and assistance relating to all the aforesaid; including, but not limited to, all the aforesaid services provided via the Internet, the World Wide Web and/or via communications networks in class 43

The decision

In a decision of 18 February 2019 (“the contested decision”), the Cancellation Division found that there was a likelihood of confusion on the basis of the similarity of the goods and services in question (to a low degree), the visual similarity of the marks (to an average degree), the phonetic similarity of the marks (to a high degree) and the average degree of inherent distinctiveness of the earlier mark.

On 28 February 2019, Enovation Brands filed an appeal requesting the Board to reject the contested decision in its entirety and order the Applicant to bear the costs of the proceedings. In its grounds of appeal, the Proprietor invoked Acquiescence (Article 61 EUTMR) as a defence along with supporting evidence showing use of its trade mark, which included advertisements for VOGA in various magazines, email correspondence, invoices, a decision of the Latvian Intellectual Property Office and a licence agreement.

The Proprietor argued that:

• ‘new evidence submitted at the Board of Appeal for the first time should be accepted if it confirms or makes it possible to assess the circumstances before, or prevailing on the date of the application for a declaration of invalidity’
• ‘on the basis of the evidence, it was clear that the Applicant had known about the prior existence of the contested EUTM in class 33 since at least 2006, along with the Proprietor’s other registrations from 2008 and 2010 which had all been used in the EU for a period of at least 5 years without challenge by the Cancellation Applicant’
• ‘on the basis of the evidence, the EUTM has been coexisting with the Cancellation Applicant’s EUTM for more than 5 years on the register as well as on the market throughout the world’

In response, the Cancellation Applicant argued that:

• ‘the Proprietor could not rely on the Acquiescence defence at the appeal stages because it was not pleaded in the first instance’
• ‘the Cancellation Applicant did not become aware of the Proprietor’s trade mark until 2013, at which point settlement talks were entered into but eventually abandoned due to the Proprietor’s unresponsiveness’
• ‘the EUTM proprietor consistently failed to explain the basis on which the con­tested EUTM was selected and the commercial intentions behind the way in which the mark had been used’

After considering both parties’ arguments, the Board found the appeal to be admissible but not well founded and that Article 61 EUTMR did not apply.

As the appeal did not expressly contest the substance of the decision, namely the application of Article 8 (1) by the Cancellation Division or the similarity of the trade marks in question, the Board did not re-examine the point, but instead turned to the issue of Acquiescence.

The Board reiterated that in accordance to case law, namely Netto/Netto Supermercados, the examination of the appeal shall be limited to the grounds set out in the statement of grounds. The Board could go beyond this and consider legal grounds not raised by the parties only if they concern fundamental procedural requirements or if their examination is necessary to ensure the correct application of the EUTMR with regards to the facts, evidence and arguments filed by the parties.

In any event, the Board found that Article 61 would not have applied in this case even if raised earlier in the proceedings because the ‘period of limitation in consequence of acquiescence starts running after the registration date of the earlier EUTM’ which in this case was 16 June 2015, meaning that at the time of the cancellation application the registration relied upon by the Cancellation Applicant was not yet 5 years old.

Conclusion

Although the appeal decision did not strictly turn on this point, this case serves as a reminder of the importance of setting out your case at the EUIPO as fully as possible to cover all the possible grounds you might be entitled to rely on as they cannot be easily introduced later down the line, if at all.

If you would like any advice on registering trade marks, please get in touch to speak to one of our attorneys.