Peek & Cloppenburg v EUIPO - Peek & Cloppenburg (Peek & Cloppenburg) (EU trade mark - Judgment) French Text [2020] EUECJ T-444/18 (13 May 2020)

Peek & Cloppenburg v EUIPO - Peek & Cloppenburg (Peek & Cloppenburg) (EU trade mark - Judgment) French Text [2020] EUECJ T-444/18 (13 May 2020)

The General Court held that the Board of Appeal erred in law by not exhaustively examining whether, under German law, the applicant's use of the contested mark was 'without authorization' in light of the delimitation agreement and other objections raised. The Board of Appeal should have fully assessed whether the...

Source-derived case information.

Citation
[2020] EUECJ T-444/18
Parties
Applicant: Peek & Cloppenburg KG (Düsseldorf); Respondent: Office de l’Union européenne pour la propriété intellectuelle (EUIPO); Intervenor: Peek & Cloppenburg KG (Hambourg)
Jurisdiction
European Union
Procedural Posture
EU Trade Mark Nullity and Revocation Proceedings / Judgment of the General Court (fourth Chamber), Appeal Against EUIPO Board of Appeal Decision
Outcome
Application dismissed
Legal Topics
EU Trade Marks, Nullity Proceedings, Revocation Proceedings, Relative Grounds for Refusal, National Commercial Name Rights, Coexistence Agreements, Application of National Law by EUIPO, Procedural Suspension
Intellectual Property European Union Law EU Trade Marks Nullity Proceedings Revocation Proceedings Relative Grounds for Refusal National Commercial Name Rights Coexistence Agreements +2 more

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Summary, issues, holding and outcome

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Parties

Peek & Cloppenburg KG (Düsseldorf)

Applicant

Office de l’Union européenne pour la propriété intellectuelle (EUIPO)

Respondent

Peek & Cloppenburg KG (Hambourg)

Intervenor

Procedural Posture

EU Trade Mark Nullity and Revocation Proceedings / Judgment of the General Court (fourth Chamber), Appeal Against EUIPO Board of Appeal Decision

  1. 1 Whether the Board of Appeal erred in law by not fully considering German national law in assessing the right to prohibit use of a later EU trade mark under Article 8(4) of Regulation 2017/1001 and Article 15 of the German Trade Mark Act; whether the delimitation agreement between the parties precluded the intervenor from seeking invalidity; whether the Board of Appeal failed to consider legitimate reasons or authorization for use under German law; whether procedural errors occurred in refusing suspension of proceedings.

Ratio Decidendi

The General Court held that the Board of Appeal erred in law by not exhaustively examining whether, under German law, the applicant's use of the contested mark was 'without authorization' in light of the delimitation agreement and other objections raised. The Board of Appeal should have fully assessed whether the agreement or other factors excluded the right to prohibit use of the later mark under Article 15(2) of the German Trade Mark Act. However, the Court found that the applicant failed to prove that the delimitation agreement conferred a right to register or use the EU trade mark, and thus the error did not affect the outcome. The application was dismissed.

Court Disposition

Application dismissed

Orders

  • The action is dismissed.
  • Applicant to bear its own costs and those of EUIPO and the intervenor.