62019TJ0084_RES
Cases T‑84/19 and T‑88/19 to T‑98/19
Cinkciarz.pl sp. z o.o.
v
European Union Intellectual Property Office
Judgment of the General Court (Eighth Chamber), 28 May 2020
(EU trade mark — Opposition proceedings — Applications for the EU figurative marks We IntelliGence the World, currencymachineassistant, robodealer, currencyassistant, tradingcurrencyassistant, CKPL, moneypersonalassistant, moneyassistant, currencypersonalassistant, CNTX Trading, AIdealer and CNTX — Earlier EU and UK figurative marks representing two intertwining circles or two overlapping circles — Suspension of proceedings — Article 71(1) of Delegated Regulation (EU) 2018/625)
EU trade mark — Appeal proceedings — Appeals before the Boards of Appeal — Suspension of proceedings — Conditions
(Commission Delegated Regulation 2018/625, recital 17, Art. 71(1))
(see paragraphs 45-54, 81)
EU trade mark — Appeal proceedings — Appeals before the Boards of Appeal — Suspension of proceedings — Obligation to examine first the question of suspension before any examination of the appeal
(Commission Delegated Regulation 2018/625, Art. 71(1))
(see paragraphs 55, 56, 75, 76)
EU trade mark — Appeal proceedings — Appeals before the Boards of Appeal — Suspension of proceedings — Obligation to state reasons — Scope
(Commission Delegated Regulation 2018/625, Art. 71(1))
(see paragraphs 57, 73, 74)
Résumé
By its judgment of 28 May 2020, Cinkciarz.pl v EUIPO — MasterCard International (We IntelliGence the World) (T‑84/19 and T‑88/19 to T‑98/19), the General Court annulled the decisions of the Board of Appeal of the European Union Intellectual Property Office (EUIPO) on the ground that the Board of Appeal failed to suspend the appeal proceedings at issue even though it had found that it was appropriate to do so, owing to the existence of ongoing parallel proceedings.
In the present case, the applicant, Cinkciarz.pl sp. z o.o., filed 12 applications for registration of EU figurative marks. MasterCard International, the intervener, filed notices of opposition to registration of those marks. The oppositions were based on seven earlier EU trade marks, including two figurative marks in black and white, representing intertwining circles and black and white circles, against which the applicant filed applications for a declaration of invalidity. Furthermore, proceedings concerning registration as a trade mark of the purely figurative sign €$, present in identical form as an element in 4 of the 12 marks at issue, were also pending before EUIPO. (
1
)
By 12 decisions, the Opposition Division found that the signs at issue were not similar and rejected the oppositions. The Board of Appeal found that the signs at issue were visually similar to a low degree. The Board of Appeal then annulled the decisions of the Opposition Division and remitted the cases to it, recommending that it suspend the opposition proceedings until final decisions were reached concerning the validity of the earlier trade marks in black and white and the registration of the purely figurative mark €$.
The applicant complained that the Board of Appeal failed to suspend the various opposition proceedings even though it had found that it was appropriate to do so.
First of all, the Court recalled that the Board of Appeal may suspend opposition proceedings, either of its own motion or at the reasoned request of one of the parties, where a suspension is appropriate under the circumstances of the case. (
2
) In addition, the Board of Appeal’s broad discretion in that regard restricts judicial review on the merits by the Courts of the European Union to ensuring that there is no manifest error of assessment or misuse of powers. The existence of parallel proceedings the outcome of which is liable to have an impact on the opposition proceedings does not mean that the latter must necessarily be suspended or that non-suspension is, in itself, sufficient to be categorised as a manifest error of assessment. The decision regarding suspension must follow upon a weighing up of the interests involved, in which the Board of Appeal must carry out the assessment, prima facie, of the likelihood that the potentially relevant parallel proceedings result in a decision that would have an impact on the appeal proceedings.
Next, the Court noted that the Board of Appeal examined the appeals in question without stating reasons for its final decision not to suspend the proceedings, even though it found that it was appropriate to suspend them. Such findings corresponded to the assessment which was a condition of suspending the proceedings. Moreover, those findings meant that there were significant likelihoods that the parallel proceedings would lead to decisions that could have an impact on the appeal proceedings, which made the weighing up of the interests involved tend in favour of the applicant. Furthermore, since general, categorical assertions do not establish that the Board of Appeal effectively exercised a broad discretion that has been conferred on it, that must apply a fortiori where no reasoning is given in respect of the crucial assessment in the matter stemming from the weighing up of the interests involved, especially if the decision of the Board of Appeal contains ambivalent findings as to that assessment.
Lastly, the Court noted that the examination of whether to suspend the proceedings before the Board of Appeal must be carried out first before the examination of whether there is a likelihood of confusion. Consequently, if the Board of Appeal finds that it is appropriate to suspend the proceedings, it has no other option than suspending them and may not therefore examine the appeal. The Court thus concluded that, since the Board of Appeal had found that it was appropriate to suspend the proceedings, it could not rule on the appeals and was unable to make any recommendation whatsoever to the Opposition Division, since any referral of the cases to the latter would mean examining the appeals and would therefore stem from an error of law.
(
1
)	Those proceedings gave rise to the judgment of 8 March 2018, Cinkciarz.pl v EUIPO (€$) (T‑665/16, not published, EU:T:2018:125), by which the Court annulled, for failure to state reasons, the Board of Appeal’s decision refusing to register the figurative mark €$. As a result of that judgment, the case was once again pending before a Board of Appeal.
(
2
)	Pursuant to Article 71(1) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018, supplementing Regulation (EU) 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1).