Invalidity proceedings in opposition proceedings – with success analysis

The publisher of the fashion magazine Vogue opened invalidity proceedings against an earlier mark during opposition proceedings against that mark. The Vogue Publishers were entitled to a success analysis of the nullity proceedings in the assessment of the application for suspension of the opposition proceedings, the CFI ruled.

Opening invalidity proceedings in response to opposition proceedings is a common way to succeed in trade mark proceedings. The plaintiff Advance Magazine Publishers, Inc, publishing inter alia the famous fashion magazine Vogue, had done so. The intervener’s legal predecessor, Enovation Brands, Inc., had filed an opposition against the registration of the word mark VOGUE and relied on its own earlier similar word mark VOGA. When that opposition was partially upheld, Advance Magazine Publishers, Inc. (‘Vogue Publisher’) brought invalidity proceedings against the earlier word mark Voga, claiming that the Voga mark had been registered in bad faith, taking advantage of the reputation of the well-known Vogue mark. At the same time, Vogue Publishers filed a motion for suspension of the opposition proceedings pending a decision on the invalidity proceedings.

However, by decision of 27 March 2018 in Case R 259/2017-4 (“the contested decision”), the Board of Appeal of EUIPO dismissed the application for suspension and upheld the decision of the Opposition Division. The Vogue publishers filed a lawsuit against this before the European Court of Justice (Court of First Instance, CFI).

Suspension procedure is optional

In its judgment (EU:T:2019:406), the European Court first clarified that there is no right to a request for suspension of the opposition procedure. Rather, the European Patent and Trade Mark Office (EUIPO) may suspend the opposition proceedings – if a suspension is appropriate to the circumstances. The Court pointed out that there was a wide field of discretion and that the suspension procedure remained optional for the Board of Appeal.

The CFI ruled that filing an application for a declaration of invalidity of a trade mark is completely independent of parallel opposition proceedings. Opposition proceedings and invalidity proceedings are two different and autonomous types of proceedings.

Right to success analysis for invalidity proceedings

The CFI stated that the Board of Appeal could not refuse a suspension on the sole ground that the invalidity proceedings against the earlier mark in the opposition proceedings had been initiated during the opposition proceedings. However, if the Board of Appeal suspects delaying tactics, it may reject the application for suspension.

Nevertheless, the Board of Appeal committed an error of assessment in rejecting the application for suspension, the European Court ruled. The CFI clarified that the Board of Appeal is obliged to strike a balance between the interests in question when exercising its discretion with regard to an application for suspension. This also requires a preliminary assessment of the prospects of success of the invalidity proceedings and to take account of that assessment. However, the Board of Appeal refused to carry out a Prima-Facie-Analysis of the applicant’s prospects of success in the invalidity proceedings.

The CFI therefore upheld Vogue Publisher’s action and annulled the contested decision rejecting the application for suspension of the opposition proceedings.

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Sources:

Judgment of CFI EU:T:2019:406

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