EU: The obligation to translate in a motion for invalidation (Mediaexpert v EUIPO)
On 20 March 2013, the company Mediaexpert S.A. submitted the following word-figurative EU trademark to the EUIPO:
for the following services in classes 35, 39 and 41:
- 35: Business management; business administration;
- 39: Transport; packaging and storing of goods;
- 41: Education; providing training; sports;
and the trademark was registered on 5 March 2014 under number 11674132 for all the services submitted.
On 22 May 2014, the company Mediaexpert sp. z o.o. applied for invalidation of the mark, citing an earlier protection right to a domestic, word-figurative trademark registered on 26 February 2010 under number R.226812 in the form:
for goods and services from classes 7, 9, 11, 12, 16, 20, 35, 39, 41 and 42.
Together with the motion for invalidation, the applicant attached a printout from the Polish Patent Office database and a list of goods and services in the Polish language, without a translation into English, which was the language of the proceeding for invalidation.
Fast forward to a ruling of 20 July 2017, the court dismissed the complaint by the applicant, that there had been a breach of the principle of the protection of justified expectations, and ordered the applicant to pay the costs of the proceedings.
Background
On 4 June 2014, the EUIPO’s Cancellation Division requested the applicant to correct the formal deficiency in its motion within two months, that deficiency consisting of the absence of due proof of the existence of an earlier protection right.
Furthermore, the motion of the applicant contained no grounds or other remarks. The Cancellation Division warned the plaintiff that a failure to remedy the above defects in the motion would result in it being deemed inadmissible and added that meeting the formal requirements alone might not be sufficient to have the contested mark cancelled. The issue of invalidity would be investigated on the merits of the case.
In a letter of 1 July 2014, the applicant provided translations of the attachments together with its argumentation and grounds. On 29 October 2015, the Cancellation Division dismissed the application in its entirety, stating that the translations provided had not been made properly so as to make it possible to reconstruct the earlier right; therefore, the plaintiff had not sufficiently justified its motion for cancellation. On 22 December 2015, the plaintiff appealed against that decision to the EUIPO.
The EUIPO upheld the decision of the Cancellation Division. The applicant appealed to the EU General Court against the decisions of the EU Board of Appeal and the Cancellation Division, demanding that these be annulled and the case referred back to the EUIPO.
In relation to the complaint, the court agreed that the previous findings had been correct and that the applicant had not met the requirements of proper substantiation, even though it had met the requirements for an admissible application. The court clearly separated these two aspects.
In responding to the call to remedy the defects in the application, the applicant met the admissibility requirements for an application for invalidation, yet an analysis of the merits of the case led to a dismissal. The reason for this was that the plaintiff provided a faulty translation of an extract from the PPO database, i.e. the translation did not maintain the original structure and arrangement, certain key words were not translated, and the graphic mark presented was black and white whereas the earlier protection right had been based on a coloured graphic; these de facto errors prevented the court from acquainting itself with the document.
The impossibility of properly determining the existence of the earlier mark due to faults in the translation is equivalent to a defective justification, and this resulted in the dismissal of the application for invalidation. The court emphasized that the ruling is not based on the absence of a translation of the list of goods and services of the earlier mark that were the subject of the assessment of the admissibility of the motion, but the absence of a translation of the extract from the PPO database that provided the grounds for trying the merits of the case.
In relation to the applicant’s assertion that there had been a breach of the principle of the protection of justified expectations, the court responded that the obligation to translate an application and attachments results from the provisions of law, and there is no possibility of an authority exempting the applicant from the obligation to comply with those provisions.
For these reasons, in a ruling of 20 July 2017, the court dismissed the complaint and ordered the applicant to pay the costs of the proceedings.