The Court of the European Union in Luxembourg agreed with Cinkciarz.pl in 12 proceedings initiated by Mastercard International, Inc. before the European Union Intellectual Property Office (EUIPO).
In 2016, Mastercard filed 12 oppositions against Cinkciarz.pl trademarks comprising elements of two overlapping circles claiming that they fall within the monopoly of Mastercard trademarks.
The EUIPO at first instance agreed with Cinkciarz.pl and dismissed the oppositions on the grounds that the trademarks are not similar, but the Board of Appeals of EUIPO overruled these decisions. According to the Board, cases should have been suspended due to other parallel pending proceedings which outcome would be prejudicial for the oppositions filed by Mastercard.
Despite this conclusion, the Board did not suspend the proceedings but sent them back to the I instance together with guidelines which were unfavourable for Cinkciarz.pl, as to how cases should be resolved.
Cinkciarz.pl did not agree with this verdict. The Polish company submitted 12 complaints to the EU Court indicating inter alia that the Board of Appeal should have suspended the proceedings in each case when the suspension was justified. The complaints also alleged that the Board should not have ruled on appeals and should not at this stage make any guidelines to the first instance on how to settle the matter. The EU court in the judgment announced on Thursday (28th May) in the joined 12 cases fully shared the above argumentation of Cinkciarz.pl.
Dr hab. Ewa Skrzydło-Tefelska and advocate Karol Gajek, lawyers from the Sołtysiński Kawecki and Szlęzak law firm, who represented Cinkciarz.pl before the EU Court in all 12 cases emphasize that this judgment, although it did not resolve the crucial issue of trademark similarity at this stage, prevent the Board of Appeal from the issuance of guidelines unfavourable to Cinkciarz.pl on how to settle the case by the first instance, before the case was fully examined. The judgment constitutes a precedent concerning the practice of EUIPO in the matter of suspending the proceedings due to other prejudicial parallel proceedings affecting its result. At the same time, the lawyers emphasize that the judgment is not final.
