Legal Updates

Intellectual Property Law – Community Trade Mark Registration – Appeal – Procedural Requirements

The case of Gabel Industria Tessile SpA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (Case T-85/07) [2008] involved a dispute over the registration of a Community Trade Mark. The applicant in this case applied to register a Community Trade Mark. The application was filed with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (“OHIM”) in accordance with Council Regulation (EC) 40/94 (on the Community trade mark) on the 2nd of April 2004.

The mark in question was the word sign “GABEL” in respect of goods in  classes 24 and 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

The opponent to the application filed a notice of opposition to the registration. The notice of opposition was filed in accordance with Article 42 of Regulation 40/94 (“the Regulation”) based on the grounds of a likelihood of confusion, within the meaning of Article 8(1)(b) of the Regulation. It was argued in the notice of opposition that there was a likelihood of confusion between the mark as applied for and a number of earlier trade marks. The earlier trade marks were related to the Community figurative trade mark No.1806199 (“GAREL”) which was registered on the 5th of January 2005. The goods in respect of which GAREL were in respect of classes 24, 25 and 26.

By a decision made on the 22nd of June 2006, the Opposition Division of OHIM upheld the opposition and rejected the application for registration in its entirety. The Opposition Division was of the opinion that due to the similarity between the trade mark application and GAREL, and due to the identical nature of the goods attributed to those marks, there was likely to be confusion in the minds of the public.

Subsequently, by a letter dated the 12th of July 2006, the applicant notified OHIM that it wished to limit the list of the goods falling within class 25 of its application to 'bath gowns'. Then, on the 17th of July 2006, the applicant elected to file a notice of appeal under Article 57 to Article 62 of Regulation against the Opposition Division’s decision.

A further decision was reached on the 25th of January 2007 (“the Contested Decision”). The applicant was given notice of the Contested Decision on the 29th of January 2007. The Contested Decision was made by the Second Board of Appeal of OHIM, and set aside the decision of the Opposition Division, which therefore meant that the trade mark applied for was allowed to proceed to registration with regard to 'bath gowns' in class 25.

The applicant subsequently applied to the Court for part-annulment of the Contested Decision due to the fact that it implicitly refused registration of GABEL in respect of the goods falling within class 24.

The Court held that the Second Board of Appeal had failed to provide a decision on the action brought before it, in so far as that action was directed at the refusal by the Opposition Division to register the mark applied for with regard to the goods in class 24. Therefore, the Court held that it had therefore infringed the first sentence of Article 2(1) of the Regulation, due to the fact that the applicant had not previously waived registration of GABEL in respect of those goods.

Although Article 63(3) of the Regulation allowed the Court to amend the decision of the Second Board of Appeal, that allowance was limited to situations in which the case had reached a stage where it was appropriate for a judicial decision on the matter in question.

In this case, the fact that the Second Board of Appeal had not made a ruling on one of the heads of claim meant that that stage had not yet been reached. This meant that the alteration of the Contested Decision would suggest that the Court was ruling for the first time on the pleas on which the Second Board of Appeal had failed to come to a decision.

It was held that such a determination did not fall within the jurisdiction of the Court as stipulated in Article 63(2) and (3) of the Regulation. Therefore, the Contested Decision had been against an essential procedural requirement. Accordingly, the Contested Decision was declared void.

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© RT COOPERS, 2008. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.


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