OHIM's practice of deciding oppositions based on only one of multiple rights pleaded suffered a blow recently, following strident criticism from the General Court (Coin SpA v OHIM, T-249/08). In the light of this decision, OHIM will find it harder to ignore relevant earlier rights in the interests of "administrative efficiency", and opponents should as a result get better justice in CTM matters.
Toss of a Coin
Those practising regularly before OHIM are well aware of the Office's practice in relation to oppositions based on multiple pleaded rights. Where possible, the Office prefers to dispense with oppositions based on as few as possible of the prior rights pleaded, and preferably a national right rather than a CTM, so that the relevant public is narrower and the decision more straightforward to make.
Thus, where an opponent relies on both an earlier CTM and a suite of national rights, all covering the same goods or services, the Office may decide the matter based on one of the national rights only, thus avoiding the need to assess a likelihood of confusion or other relevant damage in more than one EU country. This practice is based on administrative efficiency for the Office, but it is far from efficient for opponents, who find that they may have to deal with conversions in all other EU countries, an outcome that would not have arisen had the decision been based on a pleaded CTM.
In Coin SpA, the opponent did just that: it opposed a CTM for FITCOIN based on a suite of similarly broad national and International registrations and a CTM, all for COIN [Stylised]. OHIM rejected the opposition at first instance, and the Board of Appeal upheld the refusal. The Board reached its conclusion on the basis only of the Italian registrations pleaded, taking account only of how the respective marks would be pronounced and understood in Italy.
On appeal, the General Court needed little persuasion that OHIM's practice, while administratively efficient for the Office, was wrong in law. Coin SpA had pleaded multiple earlier rights, including an earlier CTM that covered all EU countries. OHIM was obliged to assess a likelihood of confusion based on the perception of the average consumer in all the territories in which the earlier mark was protected. Therefore, simply rejecting the opposition based on a finding of no likelihood of confusion in Italy was wrong, because it ignored the rights pleaded by the opponent with effect in every other EU country as well.
OHIM pleaded that in fact the decision would have been no different even if the rights in every other EU country had been considered. The General Court, however, noted that no assessment had been made in respect of the other countries, so it was impossible to know whether that was true.
The General Court annulled the Board of Appeal's decision and with it cast serious doubt on the continuation of a practice long disliked by brand owners, who are exposed to lengthy legal uncertainty, multiple proceedings and increased costs as a result of short-cuts in judgments.
OHIM can be expected to view this decision with considerable chagrin. Its original practice was based on the need for administrative efficiency, given the size of the EU and the number of CTM oppositions filed. However, given the considerable financial surplus accrued by the Office, there must be ways to ensure that staffing of the Opposition Division and Boards of Appeal is adequate to deal with full and fair examination of all oppositions received. The burden is hardly likely to be crushing, and the Office is surely up to the challenge of meting out just and reasoned decisions in proceedings where the parties have often invested considerable sums in evidence and submissions.
Indeed, doing so is clearly in the public interest. Opponents whose cases are rejected on the basis of just one national right when others, and possibly even CTMs, were pleaded can face long periods of uncertainty as to the eventual outcome of a case where conversion applications are filed in countries where prior rights were pleaded, and the cost of running separate national oppositions in those countries soon mounts up.
It is therefore in the interest of business in the EU and that of the Office's long-term credibility that its practice be changed. In this, the judgment in FITCOIN may show the way.