The matter at hand

The German company Meissen Keramik GmbH (“Meissen”) sought to register a figurative mark containing the word element ‘Meissen’ as an EU trade mark  for (inter alia) sanitary goods, non-metallic construction material and bathtubs. The German company SPM Meissen filed a notice of opposition against the registration thereof, based on several older trade marks containing the word element ‘Meissen’, including the reputed German word mark ‘Meissen’, registered for porcelain goods and services relating to the maintenance and repair of such goods.

Meissen appealed the decision of EUIPO insofar the opposition was partially allowed. The Board of Appeal annulled the decision, considering that genuine use of some of the older marks had not been proven and that no risk of confusion could be established between the other (genuinely used older) marks and the contested mark. Furthermore, the Board of Appeal found that no link could be established between the contested mark and the reputed older German mark ‘Meissen’, partly due to dissimilarity of the goods and services involved. Thus, the Board of Appeal concluded that the opposition could not be upheld on the basis that the contested mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the older German mark either.

In the appeal directed at the decision of the Board of Appeal, the General Court rejected new evidence submitted by SPM Meissen that would support proof of genuine use already submitted before the Board of Appeal. As the Board of Appeal did not err in its findings, the General Court dismissed the appeal in its entirety, after which SPM Meissen appealed to the ECJ.

The judgment of the ECJ

The ECJ reflects on the role of the General Court and holds that the purpose of actions brought before the latter is to have it review the legality of decisions of the Board of Appeal. The General Court may in principle not deal with newly brought factual matters or factual evidence, since the decision of the Board of Appeal was not based thereon. Consequently, the General Court was right to reject the corroborating evidence submitted by SPM Meissen, even though the evidence merely served to support arguments that were already stated before the Board of Appeal.

The ECJ further holds that the General Court correctly considered that the element ‘Meissen’ of the older marks could not rely on acquired distinctiveness through use. Such acquired distinctiveness was only pertinent in the reputed German mark ‘Meissen’, which mark was disregarded (due to the aforementioned dissimilarity with the services of the contested mark). The ECJ states that it is not possible to rely on the acquired distinctiveness of (a similar element of) a mark, if that mark is for some reason disregarded in the course of the proceedings.