By C-702/18P (18 June 2020) ECJ held that the assessment of the inherent distinctive character of the earlier mark constitutes an issue of law and must be examined by the EUIPO irrespective of whether the parties have made any presentation on this point.
Applicant filed Union Trademark application 013682299 
in class 30 inter alia for sugar, coffee, tea and ice cream. Relying on Art. 8 (1) (b) EUTMR opposition was filed based on national Spanish Trademark registration 2578815 word PRIMA covering goods in class 30. Following its rejection the Board of Appeal annulled the decision holding likelihood of confusion, finding that the public in Spain would understand the word “prima” not as identifying the “excellence of something” but as meaning “female cousin” or “bonus payment” and thus non-related to the goods in question. Accordingly, the Board of Appeal viewed the opposition mark to hold an average level of distinctiveness.
With its action before the General Court for the first time the applicant asserted that the earlier mark holds a weak distinctive character and therefore the attacked decision constitutes violation of Art. 8(1)(b) EUTMR. However the Court rejected the action on Art. 76(1) EUTMR as inadmissible as being belated also pointing out to Art. 188 EUTMR following which the parties may not change the subject-matter by way of their pleadings before the Board of Appeal.
In the subsequent action filed the ECJ confirmed the principle approach of the General Court however pointing out to Art. 76(1) sentence 1 EUTMR stating “in proceedings before it (EUIPO) shall examine the facts on its own motion. However, in proceedings relating to relative grounds for refusal of registration it shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.” As the EUIPO must apply Art. 8 EUTMR correctly, so the ECJ continues, the assessment of the distinctive character is not merely an issue of fact but a matter of law and must therefore be examined at any stage of the opposition proceedings and not depending on the presentation of the parties. Accordingly, the ECJ annulled the decision of the Court for violating Art. 76 EUTMR and referred the case back.
Practical Advice: While this decision provides some comfort to applicants one should always be prepared to present facts and proof possibly before the Opposition Division, as the EUIPO may reject any belated presentation according to Art 76 (2) EUTMR.
