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The opinion of AG Bobek

After finding the appeal admissible, the AG began with an analysis of Article 76(1) of Regulation 207/2009, the Community Trade Mark Regulation [now Article 95 of Regulation 2017/1001]. He concluded that this provision ”cannot be read as obliging the Board of Appeal to refrain from examining matters of law or fact that, despite not having been specifically raised by one of the parties, are inextricably linked to those raised by the parties.” [par. 48].

The AG then turned to Article 188 of the Rules of Procedure of the General Court, which states that the appeal before the GC “may not change the subject matter of the proceedings before the Board of Appeal.” He found that this provision “cannot be interpreted as barring the parties from questioning EUIPO’s assessment with regard to elements of law or fact which that office was required to consider (if need be, of its own motion) and was able to adjudicate upon” [par. 55]. The distinctiveness of the earlier mark is an example of such an element in that it is inextricably linked to the assessment of likelihood of confusion.

Drawing on the GC’s decision in Hooligan, AG Bobek distinguished two types of arguments that could be made in the context of distinctiveness of an earlier mark. On the one hand, there are arguments that EUIPO cannot assess without evidence from the parties: an example is increased distinctiveness as a result of reputation. If parties do not make these arguments before the EUIPO, it cannot take them into account of its own motion and parties are also barred from making the argument before the GC [par. 63].

On the other hand, there are elements that the EUIPO is capable of assessing out of its own motion, even if parties do not argue it. An example would be inherent distinctiveness. A failure to take one of those factors into account, or an evaluation of it made according to incorrect criteria, is an error of law that may be invoked for the first time before the GC [par. 62].

Because the inherent distinctiveness of PRIMA falls within the latter category, AG Bobek held that Primart’s arguments in this respect before the General Court were admissible. He expressly added that this includes a review of new evidence submitted by Primart [par. 98].

Comment

The AG considered it an important circumstance that the Board of Appeal had raised the issue of inherent distinctiveness out of its own motion and that Primart must be given a chance to respond to this [par. 71]. But, as the AG noted, inherent distinctiveness is a key element in the likelihood of confusion assessment and the Board of Appeal’s conclusion, absent any arguments to the contrary, that PRIMA’s inherent distinctiveness was “normal” is hardly surprising.

I am therefore not persuaded by the suggestion, at par. 71, that Primart had “no opportunity of being heard” on the issue of inherent distinctiveness. Primart, or at least its representatives, could well have anticipated that the Board of Appeal would conclude that PRIMA has a normal degree of distinctiveness if they did not argue otherwise.

It would therefore seem quite remarkable if this mere fact would entitle Primart to not just argue, for the first time, that in fact PRIMA has weak distinctive character, but also to submit new evidence for this. And parts of AG Bobek’s Opinion can be read to suggest that he wants to go even further: he seems to argue that even where the Board of Appeal does not discuss inherent distinctiveness out of its own motion, applicants can file new arguments before the C. See the last sentence of par. 62:

A failure to take one of those factors [here: inherent distinctiveness, see par. 61] into account, or an evaluation of it made according to incorrect criteria, is an error of law that may be invoked for the first time before the General Court.

Read together with par. 98, where it is stated that “the assessment of Primart’s arguments requires an examination of new arguments of law and fact, and of new evidence”, invoking an argument for the first time before the GC would also entitle the applicant to submit new evidence for this argument. Indeed, statements about inherent distinctiveness of a trade mark are normally backed up by dictionary references, examples of use, etc. and are rather empty without such evidence.

It therefore seems to this Kat that, in effect, AG Bobek’s analysis would essentially allow any party to opposition proceedings to present new arguments and evidence related to inherent distinctiveness before the GC. And note that inherent distinctiveness is only one example of arguments which, according to the AG, “EUIPO is in principle able to assess … of its own motion” [par. 62]. Thus, this reasoning would most likely also apply to any element of the comparison of signs, dominance of elements, etc., all of which are questions of law and therefore capable of being assessed by EUIPO of its own motion.

That would be a very far-reaching result which would break significantly with the strict approach currently taken by the GC and CJEU when it comes to new arguments brought before them. At least to this Kat, such a change of course seems undesirable: while it can be frustrating to be barred from bringing an argument in individual cases, one must not forget that the task of these courts is to review the legality of the EUIPO’s decisions. On its face, AG Bobek's approach would allow submission of new arguments and evidence on an indefinite number of elements of the assessment of the grounds of opposition. That seems unnecessary after two rounds of proceedings at the EUIPO and would further increase the already tremendous workload of the GC. Let’s see what the CJEU says.