SOURCE: Monthly Case-law Digest - October 2021
EU trade mark – Opposition proceedings – Application for an EU figurative mark representing an arrow with wing – Earlier EU figurative mark representing an arrow with wing – Relative ground for refusal – Partial rejection of the opposition – Limited scope of the opposition in the context of the appeal before the Board of Appeal – Partial withdrawal of the opposition – Plea raised by the Board of Appeal of its own motion – Prohibition on ruling ultra petita
Škoda Auto a.s. applied to the European Union Intellectual Property Office (EUIPO) for registration of an EU figurative mark representing an arrow with wing. The applicant, Škoda Investment a.s., opposed the registration of that mark in respect of all the goods and services referred to in that application. The Opposition Division of EUIPO rejected that opposition as inadmissible. The applicant brought an appeal against that decision and requested, in the statement setting out the grounds of appeal, that it be annulled in part in so far as it concerned only certain goods and services.
The Board of Appeal of EUIPO inferred from this that the applicant had withdrawn its appeal in respect of the other goods and services covered by the mark applied for. The effect of that partial withdrawal was that the goods and services not mentioned in that statement no longer formed part of the opposition proceedings and that, as regards those goods and services, the rejection of the opposition had become final. Consequently, the Board of Appeal partially annulled the decision of the Opposition Division in respect of the contested goods and services and referred the case back to it for further examination of those goods and services.
In its judgment, the Court dismisses the applicant’s action and provides clarification as to the scope of the examination carried out by the Boards of Appeal of EUIPO in opposition proceedings. In that context, the case-law established in proceedings before the EU Courts concerning the relationship between pleas raised of the Board’s own motion and the form of order sought in an action applies.
Findings of the Court
First of all, the Court recalls that the Board of Appeal, in the context of an appeal relating to a relative ground for refusal of registration of a mark, which is brought against a decision of the Opposition Division, cannot adjudicate beyond the subject matter of the appeal brought before it. 62 That Board, in accordance with the jurisdiction of the EU Courts under the system for governing judicial review proceedings, can only annul the decision of the Opposition Division within the limits of the submissions which an appellant set out in its appeal.
Next, the Court observes that the Board of Appeal must examine of its own motion the pleas relating to the issues of law which have not been raised by the parties, but which concern essential procedural requirements, such as the rules on admissibility of an opposition. Nonetheless, that power does not mean that the Board of Appeal has the power to modify of its own motion the form of order sought by an appellant in the appeal brought before it, since such an approach would disregard the distinction between the pleas in law and the form of order sought, the latter of which defines the limits of an appeal. Thus, by examining of its own motion a plea relating to essential procedural requirements, the Board of Appeal does not go beyond the scope of the dispute before it or in any way infringe the rules of procedure relating to the presentation of the subject matter of the dispute. However, it would be different if, following the examination of the decision forming the subject matter of the appeal, the Board of Appeal, on the basis of such an examination of its own motion, were to declare an annulment going beyond what was sought in the duly submitted form of order before it on the ground that such an annulment was necessary in order to correct the unlawfulness found of its own motion in carrying out that analysis.
Finally, the Court concludes that, in the present case, the applicant is not justified in claiming that the Board of Appeal should have annulled the decision of the Opposition Division in its entirety, since the effect of that decision would have been to rule outside the subject matter of the dispute as defined by the applicant itself.