EU Invalidity Proceedings

Intellectual Property – European Union – Trade marks – Invalidity Proceedings – Community Trade Marks
 

In Lithomex ApS v Office for Harmonisation in the Internal Market (Trade Marks and Designs [2015] following a hearing on 3 June 2015 the General Court of the European Union (Second Chamber) dismissed the action brought by Lithomex ApS (Lithomex) against the decision of the Fifth Board of appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) relating to invalidity proceedings between Glaubrecht Stingel GmbH & co. KG and Lithomex concerning the successful registration by Lithomex of the word sign 'LITHOFIX' as a Community trade mark. 

In January 2009, Lithomex filed an application to register the word mark 'LITHOFIX' as a Community trade mark in Classes 19 in respect of Building materials (non-metallicand 31 in respect of Agricultural, horticultural and forestry products. On 16 June 2009, the mark was registered as a Community Trade Mark (CTM).

The intervener applied for a declaration that the CTM be declared invalid in respect of goods in Class 19. The earlier trade marks relied on in support of the application for a declaration of invalidity were:

• the word mark 'LITHOFIN', registered in Germany on 9 March 1979 in respect of goods in Class 1;

• the international word mark 'LITHOFIN', covering the Czech Republic, Hungary, Poland, Slovakia and Slovenia in respect of goods in Class 1; and

• the international word mark 'LITHOFIN', covering the Benelux countries, Bulgaria, Denmark, Estonia, Spain, France, Italy, Latvia, Lithuania, Austria, Portugal, Romania, Finland and Swedenin respect of  goods in Class 1.

The Cancellation Division rejected the application for a declaration of invalidity, ruling that the goods were different. The intervener's appeal against that decision was upheld by the Fifth Board of Appeal of OHIM (the Board), which declared the contested mark to be invalid in respect of all the goods in Class 19 (the contested decision). In the interest of procedural efficiency, the Board considered the application for a declaration of invalidity only on the earlier mark registered in Germany (the earlier mark).

The Board held that, despite the relevant public's level of attention being higher than average, there was a likelihood of confusion between the marks regarding the goods in Class 19, due to the similarity of the goods, the strong visual and aural similarity of the marks at issue and the average distinctiveness of the earlier mark. The applicant brought proceedings before the General Court of the European Union seeking an annulment of the contested decision.

In support of the action, the applicant relied on a single plea in law, alleging infringement of art 8(1)(b) of the Regulation.

The action was dismissed.

It was held that in the light of the similarity of the goods in question and the strong similarity of the marks in question, given the average distinctiveness of the earlier mark, there was a likelihood of confusion between the marks. Consequently, the Board had not failed correctly to apply art 8(1)(b) of the Regulation in finding that there was a likelihood of confusion between the marks.

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© RT COOPERS, 2015. 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.