Pink Lady vs English Pink
One of the presumably most successful apple breeding results is known in the market under the trademark “Pink Lady”. It is a protected apple variety (Cripps Pink) which has successfully conquered the apple market worldwide in the last decade. Quite understandably, the owners vigorously defend their existing registrations not only for the word mark “Pink Lady” but also the corresponding figurative Union trademarks 2 042 679 “Pink Lady” , 4 186 169and .
Most recently, the Court of Justice of the European Union (CJEU) had to render a decision on the EUIPO’s and its Board of Appeal’s decisions on the risk of confusion between “Pink Lady” and “English Pink”.
In its judgement dated 21 July 2016 the CJEU denied a risk of confusion between the various trademarks for “Pink Lady” and Union trademark application 008 610 768 “English Pink” for inter alia fresh fruit and vegetables and confirmed the EUIPO’s decision that no risk of confusion was given between the registered trademarks for “PINK LADY” and “ENGLISH PINK” albeit identical goods were covered by the registered trademarks.
The decision is insofar remarkable as the CJEU was asked to decide whether the EUIPO or subsequently the Board of Appeal or the General Court was bound by a decision of a national court confirming the risk of confusion (see here and here .
The Tribunal de Commerce de Bruxelles (Commercial Court, Brussels) had confirmed in a judgement of 28 June 2012 in an action for infringement brought by the owners of the above mentioned EU word and figurative marks and Benelux mark 559177 “Pink Lady” a risk of confusion because of use of “English Pink” for apples. In its capacity as European Union Trademark Court the Belgian Court confirmed an infringement of the EU trademark registrations by use of “English Pink”, granted an injunction against further use of “English Pink ” in the EU and ordered the cancellation of the corresponding national Benelux registration for “English Pink”.
The owners of the EU trademark registrations informed the EUIPO about the judgement which had become final. Nevertheless, the Fourth Board of Appeal of the EUIPO did not take the decision of the Benelux Court into account and denied a risk of confusion.
The owners of the various PINK LADY registrations appealed the negative decision before the General Court (see here). The main issue was whether and to which extent the judgment of the Tribunal de Commerce de Bruxelles had a binding effect on the Board of Appeal of EUIPO, and subsequently should have been taken into account by the General Court as well. The CJEU came to the conclusion that as opposition proceedings with the EUIPO concern different subject-matters than infringement proceedings, neither the EUIPO nor the General Court were bound by a decision of a national court even if said national Court acted in its function as an European Union Trademark Court. (see here)