The matter at hand

Westermann applied for the registration of an EU trade mark for the stylized word mark BAMBINO LÜK. Diset filed an opposition against this EU trade mark application on the basis of its earlier trade mark for the word- / figurative mark BAMBINO. The opposition was upheld by the Board of Appeal of EUIPO in respect of certain goods. After the Board of Appeal rendered its decision, the earlier mark which formed the basis for the opposition was revoked.

The General Court dismissed the action brought before it by Westermann. Westermann appealed this decision before the ECJ on the ground that the General Court erred in law and distorted the facts by taking into account the earlier mark of Diset, even though that mark had been revoked and therefore no longer had any effect at the time Westermann brought its action before the General Court.

The judgment of the ECJ

First of all, the ECJ indicates – with reference to its judgments in Sunrider (C416/04) and Kaul (C-29/05) – that the General Court may annul or alter a decision against which an action has been brought “only if, at the date on which that decision was adopted, it was vitiated by one of those grounds for annulment or alteration”, but “not (…) on grounds which come into existence subsequent to its adoption” (paragraph 27).

On this basis, the ECJ had already held in Cadila Healthcare (C‑268/12) that “the expiry of an earlier mark after the action had been brought before the General Court did not deprive the decision of the Board of Appeal of EUIPO of its purpose or of its effects” and, consequently, that the “assessment in that decision that there was a likelihood of confusion between the marks at issue (…) continued to produce its effects at the time the General Court delivered its judgment” (paragraph 29).

Accordingly, the ECJ holds that, since the actual date of revocation of the earlier mark is subsequent to the decision of the Board of Appeal, it must be held that the General Court was not required, during its review of the lawfulness of that decision, to take into account the EUIPO decision revoking that earlier mark (paragraph 30).