Background of the case

The appellant, SWEMAC Innovation AB, filed an EUTM application on October 2, 2007, for the word mark SWEMAC in Class 10 and 42. The trademark was duly registered on September 4, 2003. On September 3, 2013, SWEMAC Medical Appliances AB filed a partial nullity action pursuant to Article 60.1, c) of Regulation 2017/1001. The claim was relied on the Swedish company name SWEMAC Medical Appliances AB, registered as a business as from December 12, 2007. The applicant argued that there was likelihood of confusion among the prior right and the EUTM registered. As to support the line of argumentation, it submitted evidence seeking to prove use of the earlier sign in the course of trade.

On 25 September 2014, the Cancellation Division rejected the application for a declaration of invalidity in its entirety on the ground that the intervener had not proved that the use was not more than mere local significance (in Sweden) and that therefore, one of the conditions provided for in Article 8.4 of Regulation was not fulfilled.

Afterwards, SWEMAC Medical Appliances AB filed an Appeal with additional use evidence. The Fifth Board of Appeal of the EUIPO uphold the Appeal in its entirety, and declared the partial nullity of the trademark as in first place, there is likelihood of confusion among the concerned signs and in second place, the use of the sign was more than local.

Subsequently, SWEMAC Innovation AB appeals the outcome before the General Court on the ground of the following claims:

Admissibility of documents filed for the first time before the General Court.

The EUIPO disputes the admissibility of the Annexes submitted as evidence by the appellant as those were not filed in the appropriate stage of the process. The Court upholds this claim, and only accepts the document which refers to a local resolution of the Marknadsdomstolen (Commercial Court of Sweden) as “that decision may be regarded as evidence in the narrow sense”.

Infringement of Article 60.1, c) in connection with Article 8.4 of the Regulation and in conjunction with the Swedish trademark law.

The appellant argues that the Board of Appeal erred in its assessment over the likelihood of confusion, as it evidenced a prior right registered earlier than the company name Swemac Orthopaedics AB, which embodies the common distinctive term SWEMAC. On the other hand, it states that the peaceful coexistence of the concerned signs shall contribute to decrease the risk of confusion, and thus, the Appeal shall be dismissed in its entirety. In this sense, the Court must assess based on the principle of effective judicial protection, whether the requirements deprived from the Swedish law are correct. Those have been indeed duly evidenced and proved By SWEMAC Innovation AB (use of the sign in the course of trade, it must be of more than mere local significance, the right to that sign must have been acquired in accordance with the law of the Member State in which the sign was used prior to the date of filing of the application for registration of the EU trade mark and the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark).

Taking into account all the above, the Court states that it is not competent to decide during a nullity proceeding, about a local conflict, as both are prior rights which legal regime is stabled under Swedish law. Anyhow, the Court rules that the appellant did not provide with the body of evidence required as to apply the Swedish law with regards to the rights deprived in the local legislation for commercial names. In particular, that it is stablished in trade or that the main part of the targeted public recognizes the sign in connection with the corresponding goods and services. That is to say, it did not provide with evidence as to prove that the sign was not merely of local significance.

With regards to the risk of confusion and the previous peaceful coexistence of the EUTM and the prior sign, the appellant failed to prove that this fact has indeed diminished the risk of confusion among the concerned signs. The appellant holds the burden of proof f to evidence that the coexistence of the marks was grounded on the lack of likelihood of confusion among the public, as it has been repeatedly upheld by current case –law.

Infringement of article 61.2 in connection with article 8.4 of the Regulation: acquiescence

The appellant did not provide evidence as to prove that SWEMAC Medical Appliances AB had prior knowledge, according to the Regulation and the case law parameters, as to deem that there was acquiescence when filing the nullity action.  Therefore, this Court dismisses in its entirety the claim, as once more the use of the mark in Sweden as well as the awareness of the intervener over this fact, have not been duly proved.

Judgement of the General Court (Ninth Chamber) of February 7, 2019 in the matter 7-287/17