UPC Court of Appeal grants language proceedings shift to English - EU trade mark dispute: JOY v Joyful by nature

UPC Court of Appeal grants language proceedings shift to English

On 17 April, the Court of Appeal of the Unified Patent Court issued a decision regarding the change of language of proceedings at the request of one of the parties in a dispute under its jurisdiction.

The case UPC_CoA_101/2024 involves a dispute in the local division of Düsseldorf between two US companies, 10X Genomics and Curio Bioscience, centring on the alleged infringement of Genomic's European patent EP2697391, which covers a method and product for the localised detection of nucleic acid in tissue samples.

However, the UPC Court of Appeal’s decision focused on Curio Bioscience's application to change the language of the UPC proceedings. Although this request was based on Article 49(5) of the Unified Patent Court Agreement (2013/C 175/01), which allows the language to be changed to that of the patent at the discretion of the President of the Court of First Instance on basis of fairness, the Court of First Instance rejected it. 

The Court of Appeal emphasised that in such cases relevant circumstances must be taken into account so as to determine the fairness of the change of language of proceedings, such as:

• The language most commonly used in the technological field involved and the language in which the evidence is drafted.
• The nationality or domicile of the parties. Both parties must be able to understand what is being presented on their behalf and by the other party.
• The size of the parties. A large multinational company with a solid legal team may be better able to handle multilingual disputes than a small company with limited resources and a presence in only a few markets.
• How the change of language will affect the progress of the case and any delays it may cause, especially in urgent cases.
• In cases where the interests are equally balanced, the position of the defendant is the decisive factor since the claimant already has had the chance to set several relevant aspects of the dispute (e.g. where and when the claim is brought, choice of language of proceedings, language of the patent object of the dispute).

Having considered all these circumstances, the Court decided to grant Curio Bioscience's request to change the language of the proceedings to English. After all, both companies are American, which suggests that English is the natural working language for both. Furthermore, as the technological field and most of the evidence submitted by both parties is in English the use of this language for the proceedings would facilitate the understanding and handling of the evidence. However, although Curio Bioscience argued that it was a much smaller company than 10x Genomics, the Court of Appeal did not consider this to be a decisive factor in the case.

EU trade mark dispute: JOY v Joyful by nature

On 24 April, in case T-157/23, the General Court of the European Union had to decide whether the registered  word trade mark "JOY" of the French fashion designer Maison Jean Patou was well-known enough to support and opposition against the registration of the word trade mark "Joyful by nature".

In November 2019, Kneipp GmbH, a German cosmetics company, filed an application with the European Union Intellectual Property Office (EUIPO) to register the word sign 'Joyful by nature' as an EU trade mark (Nº 018159946), which mainly designates cosmetics, perfumed candles and marketing services falling within Classes 3, 4, 35 and 44 of the Nice Classification.

In July 2020, Jean Patou, a French luxury goods company (mainly fashion and fragrances), filed an opposition based on an earlier EU word mark 'JOY' (Nº 14790232) covering goods in Class 3 of the Nice Classification, including hair care preparations, skin care cosmetics, eyebrow cosmetics, etc.

At first instance, the Opposition Division of the EUIPO upheld the opposition on the basis of the reputation of the earlier word mark JOY. However, the Board of Appeal of the EUIPO partially annulled the decision, specifically the application for marketing and promotional services in class 35. However, it agreed that the JOY mark had a reputation in a substantial part of the European Union, particularly for goods in Class 3, and that the applicant could take unfair advantage of the similarity between the two marks.

Kneipp appealed to the General Court of the European Union, which had to decide whether the mark applied for, 'Joyful by nature', infringed the rights of the earlier mark, 'JOY', taking into account its reputation, similarity and the possibility that Kneipp might take unfair advantage of the reputation of the earlier mark.

The General Court upheld EUIPO's decision and considered that JOY has a reputation for perfumes and fragrances in a significant part of the European Union, in particular in France. Although its reputation may have diminished over the years, there was still a "residual reputation" at the time of the application for the new trade mark.

In addition, the Court clarified that the proof of reputation could be based on documents from before or after the date of application, as reputation is acquired and lost gradually. In this case, as there was no evidence of a sudden disappearance of JOY's reputation, it was considered that the trade mark still had a reputation at the relevant date.

All in all, the General Court confirmed the distinctive character of the JOY mark, its similarity to the mark applied for and the likelihood of confusion between them. It therefore dismissed the appeal and held that the owner of the trade mark applied for could take unfair advantage of the reputation of JOY.