Absence of res judicata in final judgments by Community trademark courts vis-à-vis the European Union Intellectual Property Office (EUIPO)


tThe Court of Justice of the European Union (CJEU), July 21, 2016, C-226/15, Apple and Pear Australia Ltd/Star Fruits Diffusion

In this case, the Court of Justice of the European Union recalls the extent and limits of the powers and functions of the European Union Intellectual Property Office (EUIPO) and of the national courts seized as European trademark courts.


In 2009, the Belgian company Carolus C filed an application with the EUIPO for registration of the word sign “English Pink” as a Community trademark. In 2010, Apple and Pear Australia Ltd and Star Fruits Diffusion, filed a notice of opposition with the EUIPO based on three earlier trademarks, including the word mark “Pink Lady”.

Meanwhile, Apple and Pear and Star Fruits Diffusion brought an action for infringement against Carolus C, before the Tribunal de commerce de Bruxelles (Commercial Court, Brussels), in its capacity as a Community trademark court.

The Belgian trademark court annulled the “English Pink” trademark, ordering Carolus C to refrain from using the mark in the EU.

In view of the fact that, the Tribunal de commerce de Bruxelles (Commercial Court, Brussels) gave its decision before the EUIPO had decided on the opposition ruling, the European Union Trademark Office could thus have taken into account the judgment of the Belgian trademark court of the EU.

The EUIPO nevertheless rejected the opposition on the grounds that the marks were not visually, conceptually or phonetically similar. The appellants therefore applied to the General Court of the European Union for annulment of  the decision of the EUIPO.

The General Court of the EU granted the application for annulment on the ground that the EUIPO, although not bound by the decision of the Belgian Community trademark court, did not take into account the potential impact of this judgment on the outcome of the opposition proceedings.

The General Court of the EU however objected to the registration of the contested trademark on the grounds that it does not have jurisdiction to substitute itself to the assessment of the Board of Appeal.


Since the applicants found the decision of the EU Court unjustified, they then appealed to the CJEU.

The CJEU in turn rejected the appeal and recalled first of all that EUIPO is the EU body with exclusive jurisdiction to authorise or refuse the registration of an EU trademark.

The Court also held that EU trademark courts have jurisdiction to give judgment prohibiting the pursuance of infringement actions of a Community trademark extending throughout the territory of the European Union.

Consequently, any proceedings brought before the  EUIPO will have a subject matter different to an infringement action before a national EU trademark court.

Since the proceedings involve different subject matters, the EUIPO is not bound by final judgments of national EU trademark courts.

On the other hand, EUIPO should assess the potential impact of any judgment given by an EU national trademark court on the outcome of proceedings brought before it.

The defense strategy and timeline should therefore be established carefully in order to defend a Community trademark right.