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Brexit used as reason to request stay of proceedings from CJEU.

Written by Mark Reed on 04 December 2018

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Two identical trademarks called ‘Alcolock’ have been battling it out in the Court of Justice of the European Union (CJEU). This dispute has been going on since 2012 when Lion Laboratories (Lion), who produce breath alcohol analysis products, requested that the other newer ‘Alcolock’ mark owned by Alcohol Countermeasure Systems (ACS) be declared invalid two years after it was registered under classes 9, 37, 42.

For a previously registered mark to have a newer marks registration invalidated, it must prove that there has been genuine use of the mark prior to the new registration. This is to ensure that owners do not abuse their position of ownership by registering marks, then sitting on them to avoid others registering them, and for the sole purpose of making money out of the assignment of the mark.

Lion have registered the ‘Alcolock’ mark with class 09 specifications such as apparatus for testing, measuring, indicating, recording and/or analysing breath for alcohol; control apparatus for or responsive to the aforesaid apparatus; parts and fittings therefor.

When the application to declare the new mark invalid was submitted, the EUIPO made a decision in 2014 to approve the invalidity claim on the grounds that Lion had proved sufficient genuine use of their registered mark for ‘Alcolock’ and found that the two marks were identical in name and also very similar in class specification.

The decision was appealed by ACS in 2015 and the First Board of Appeal found that the decision at first instance was correct and that Lion had a sufficient level of genuine use, and so dismissed the appeal. This process was repeated and ACS appealed again and again, all the way up to the CJEU of which the argument had shifted towards Brexit. Specifically, ACS said that the decision should be set aside the judgment under appeal and stay the proceedings, pending the UK’s withdrawal from the EU and that the Board of Appeal had made a manifest error of assessment.

However, the CJEU instead broke down the decision in to three fundamental errors on the part of ACS, namely that some of the appeal was inadmissible, some of it as unfounded, and some of it as ineffective. They then granted the UK government leave to be able to intervene, but in support of the EUIPO request to dismissed the appeal. They finished with a point on the attempt to bring Brexit into it, by saying that ACS was attempting to obtain a new appraisal of the facts already assessed by the General Court, the CJEU said, but the company failed to establish that the General Court had distorted the facts of the matter.

They then held that it would be contrary to jurisprudence to require a stay of proceedings on the basis of a ‘future’ withdrawal from the EU by the UK and that Lion’s earlier-registered mark had been sufficiently established during the relevant period. They said that the General Court had correctly considered the relevant characteristics of the market when considering the earlier-registered trademark’s use.

It was ended with a final note on the attempt at using Brexit as a reason for a stay of proceedings by saying that withdrawal would not retroactively affect the outcome of invalidity proceedings based on an earlier trademark of that member state.

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