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21 March 2019Europe

EU court backs medical device company over EUIPO

The EU General Court yesterday, March 20,  annulled a European Union Intellectual Property Office (EUIPO) decision and handed a trademark victory to Spain-based  Prim.

Germany company  Primed Halberstadt Medizintechnik applied to register its mark ‘Primed’ as a trademark back in 2006, covering goods such as eye-wash bottles, syringes and catheters (class 10), tableware for invalid and geriatric care (class 21) and services that include the wholesaling of goods in class 10 (class 35).

In 2013, ‘Primed’ was registered as an EU trademark. But the following year, Prim filed an application for a declaration of invalidity.

Prim cited three Spanish figurative marks, which each feature the word ‘Prim’ and a logo, each covering goods in class 10. Primed then requested that Prim provide proof of genuine use of all three trademarks.

The EUIPO’s Cancellation Division declared the contested trademark invalid in respect of some of the goods in class 10.

After deciding that the scope of protection in one of the Spanish marks hadn’t been demonstrated, the division concluded that genuine use had been proven for the other two marks over the periods from February 19, 2009, to February 18, 2014, and from January 22, 2008, to February 21,  2013.

Primed appealed against the part of the decision, which upheld the declaration of invalidity in respect of some of the class 10 goods, arguing that Prim hadn’t proven genuine use of the earlier national marks.

Prim also appealed, against the Cancellation Division’s finding that the contested mark wasn’t invalid in respect of classes 21 and 35.

In December 2016, the EUIPO’s Fourth Board of Appeal dismissed Prim’s appeal and upheld Primed’s appeal in its entirety, annulling the Cancellation Division’s to declare ‘’Primed’ invalid in respect of some of the goods.

Essentially, the appeal board had found the division had erred in its determination of one of the periods that Prim needed to prove genuine use.

It concluded that if use had to be proven during a first period, running from 19 February 2009 to 18 February 2014, the second period would cover the five years preceding the date of publication of the application for an EU trademark, namely 30 April 2007 (when ‘Primed’ as published), and not January 22, 2013 (when ‘Primed’ was registered).

The Board of Appeal found that Prim hadn’t submitted any proof of genuine use for this period and that the EUIPO wasn’t required to point out to Prim the deficiencies in the documents it submitted.

Prim appealed against the decision and yesterday, succeeded in its argument before the General Court.

According to the Spanish company, the appeal board had “seriously infringed” its rights of defence when it determined a new second period but didn’t ask Prim to submit additional evidence.

In response, Primed argued that it was for Prim to correctly identify the relevant periods and the EUIPO can’t be held to blame for Prim’s error.

“It follows that the Board of Appeal found that there was no genuine use of the earlier national marks in respect of a period which was never discussed by the parties and on which they therefore had no opportunity to comment nor, consequently, to submit evidence at any stage of the proceedings before EUIPO,” said the court, concluding that Prim’s argument was justified.

The court annulled the contested decision in its entirety.

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