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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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It's the facts, stupid.

In a recent European (General) Court case (T-579/10, macros consult GmbH - Unternehmensberatung fur Wirtschafts und Finanztechnologie v MIP Metro Group), macros consult failed in its cancellation proceedings (brought against a CTM registration owned by MIP Metro), due to a failure to file basic factual information about earlier rights.

The CTM Regulation (CTMR) contains some extremely powerful provisions which may be relied on by parties in opposition and post-registration cancellation proceedings. These include the ability, (as here), to rely on an earlier "non-registered trade mark" or "other sign used in the course of trade of more than mere local significance". This is subject to the test that the rights were acquired earlier than the filing date of the CTM application or registration under attack, and the earlier right relied on confers, under the relevant national law, the right to prohibit the use of a subsequent later trade mark. In some national jurisdictions, the "nonregistered trade mark" or "other sign used in the course of trade" can sometimes be seen as a sign of relatively low importance, when compared with the scope of, for example, a national or Community trade mark. Examples include company names and personal names.

However, in order to rely on such a right, the opponent or applicant to cancel must prove that national law does permit it to prohibit later use, rather than assuming that OHIM will automatically recognise what earlier rights may be relied on in all member states.

Unfortunately, the applicant for invalidity in this case (macros consult) failed to file the most basic information showing that its company name existed, and that the existence of this name, under German law, gave it the right to invalidate the later CTM registration for MAKRO.

In the current case, it is clear that macros consult did probably have a suitable amount of information which could have been relied on in the invalidity proceedings. However, the majority of the relevant material was filed only before the General Court, rather than before the OHIM Cancellation Division or before the Board of Appeal. Under OHIM practice, filing material for the first time before the Court ensures that it will not be taken into account.

Comment 1

This result must be somewhat annoying for macros consult, but they only have themselves (or their advisors) to blame. The Regulation is clear on the requirements, and those in respect of which macros failed were basic factual points, namely,

1. That the right to the sign was acquired in accordance with the law of the member state in which the sign was used prior to the date of application for registration of the CTM (here, a German company name);

2. That the sign conferred on its proprietor the right to prohibit the use of the subsequent trade mark under the law of that member state.

These are generally not difficult points to prove, relating as they do to basic tenets of German law. Macros consult merely needed to show what was required under German law to be able to act, and then to file this information at OHIM. Unfortunately, however, it did not do this, and as a result its invalidity action against the mark MAKRO was dismissed on technical grounds, before any substantive issues could be considered.

The above case should be contrasted with the very different decision made by the European (General) Court in Peek & Cloppenburg (Hamburg) v Peek & Cloppenburg (Düsseldorf), T-507/11. In this case Peek & Cloppenburg (Hamburg) had used its company name since 1911 in respect of clothing department store services. It then objected to Peek & Cloppenberg (Düsseldorf)'s CTM application for the trade mark PEEK & CLOPPENBURG, in Classes 25 and 35, on the basis of its earlier, unregistered rights.

Unlike the macros consult case, the Opposition Division here was in no doubt that, on the evidence before it, Hamburg was able to exercise its earlier rights, and confirmed that it had filed sufficient evidence to prove that its rights fell within the earlier (German) law, and that German law enabled it (Hamburg) to prohibit use of a later mark by the Düsseldorf based CTM applicant.

Düsseldorf, however, objected to this finding, and appealed on the basis that Hamburg had tolerated its (Düsseldorf's) use for more than five years and thus was no longer able to challenge its later filed application. On a review of the relevant German law, it became clear that the "tolerance" referred to by Düsseldorf had to be in the use of a registered mark. As Düsseldorf's mark had not yet proceeded to registration (in that it was the subject of opposition proceedings), it had not been registered for a period of five years, and so the co-use of that mark (which seems to have extended for more than five years) was of no relevance.

Düsseldorf also appealed on the basis that Hamburg's use was merely local use and thus insufficient to be able to be used as a basis for an opposition under Article 8(4) of the CTM Regulation. However, the First Board of Appeal disagreed with this view, on the basis of the long standing use of the name by Hamburg, since 1911, and in more than one part of Germany.

Comment 2

The General Court in this case does appear to be emphasising that the most important point to be considered, when an opposition/invalidity action does rely on an earlier unregistered right of more than mere local significance, is the question of whether the use made is merely "local".

This should be considered carefully, if a party wishes to base an opposition on earlier unregistered rights. Although the rights granted under Article 8(4) CTMR are potentially very strong, OHIM appears to be indicating that a "local" right (perhaps a well known name in only one or two localities of an EU country) would not be sufficient to form the basis for a successful opposition, even if those rights were technically enough to object to the later use in the country concerned. This is the overlap between the various requirements of this Article - although an opponent/applicant for invalidity must prove the facts of its rights on a national basis, the effect on the later filed application/registration is then judged on an EU-wide basis.

Given the importance of this case to the companies concerned, as well as the difficult questions raised by the facts, it is no surprise that it has now been appealed further to the full European Court of Justice.