Legal Updates

Intellectual Property Law – Jurisdiction – Community Trade Mark – Mark VOGUE - Opposition

The case of Advance Magazine Publishers Inc v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Case T-481/04) [2007], concerned jurisdiction issues in relation to an application for a Community Trade Mark. The applicant sought to register the word mark 'VOGUE' as a Community Trade Mark, in respect of clothing in class 25. An application was made to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (“OHIM”).

A Portuguese undertaking, however, opposed the registration on the basis of its prior registration of the word mark as a Portuguese trade mark in respect of footwear (also in class 25). The Opposition Division of the OHIM ruled in favour of the opposition and the applicant subsequently appealed against that decision.

When the issue came before the Board of Appeal of OHIM, the applicant relied on its earlier registration of the word mark as an international trade mark, which had effect in Portugal, prior to the opponent's registration of its Portuguese trade mark. It argued that as a consequence the two trade marks had co-existed in Portugal for more than 30 years, and that its registration of the word mark as a Community trade mark would not alter the respective rights of each party.

The Board of Appeal decided that pursuant to Article 74(2) of Council Regulation (EC) 40/94 (on the Community trade mark) it could not consider the new argument relating to the existence of the international trade mark. It could not consider the new argument as it had not been raised before the Opposition Division, where the existence of the international trade mark had not even been mentioned.

The applicant subsequently brought proceedings before the Court of First Instance in an attempt to annul that decision. It argued that the Board of Appeal ought to have considered its new argument. The Court ruled that the Board of Appeal, when presented with facts and evidence which were submitted late, had the discretion whether to take account of such information. This rule was deemed to be pursuant to Article 74(2). In this case, instead of exercising the discretion, the Board of Appeal had wrongly considered itself to be lacking any discretion. Accordingly, the contested decision was annulled.

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© RT COOPERS, 2007. 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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