The matter at hand

Carolus C. filed an application for registration of an EU trade mark and a Benelux trade mark, both for the word mark ENGLISH PINK. Apple and Pear Australia and Star Fruits Diffusion filed an opposition against the EU trade mark application on the basis of its earlier EU trade mark for the word mark PINK LADY. Both the Opposition Division and the Board of Appeal rejected the opposition, the latter without taking account of the judgment of the EU trade mark court in Brussels which had meanwhile been rendered in proceedings between the same parties, in which the Benelux trade mark was annulled and Carolus C. was ordered to refrain from using that mark in the EU.

In the appeal brought before it, the General Court annulled the contested decision on the ground that the Board of Appeal had failed to state its reasons for not taking the judgment of the court in Brussels into account, but rejected the remainder of the appeal, considering that the res judicata attached to the judgment of the court in Brussels is not binding on EUIPO.

The judgment of the ECJ

The ECJ rules that, “in order that decisions of a court of a Member State or EUIPO which have become final are res judicata and can therefore be binding on such a court or EUIPO, it is required that parallel proceedings before them have the same parties, the same subject matter and the same cause of action” (paragraph 52).

According to the ECJ, the respective subject matter of the cases examined by the court in Brussels and by EUIPO are not identical since “the action for infringement before the Belgian court sought annulment of the Benelux mark ENGLISH PINK and an order to refrain from using that sign throughout the territory of the Union, whereas the subject matter of the proceedings before EUIPO was opposition to the registration of the EU trade mark ENGLISH PINK” (paragraph 54).

Moreover, the ECJ holds that “in the light of the exclusive competence of EUIPO’s adjudicating bodies to authorise or refuse the registration of an EU trade mark (…) the subject matter of any proceedings before EUIPO relating to registration of an EU trade mark or opposition to that registration necessarily is different to any proceedings before a national court, even where that court acts as an EU trade marks court” (paragraph 62).

The ECJ concludes that the General Court correctly found that the principle of res judicata did not mean that the Board of Appeal was bound by the judgment of the court in Brussels (paragraph 64).