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    26/03/2012 - "General Court considers implications of applicant’s death before Board of Appeal’s decision" by Richard Milchior

    In Gross v Office for Harmonisation in the International Market (OHIM) (Case T-298/10, March 8 2012), the General Court has considered the implications of a trademark applicant’s death before the decision of the Board of Appeal is issued.

    On September 30 2005 Rolando Mario Toro Araneda filed an application for the registration of the following figurative sign as a Community trademark (CTM) in Classes 14, 41 and 44 of the Nice Classification (in particular, "printed matter", "dance instruction" and "psychotherapeutic services").

    On September 11 2006 Christina Arrieta D Gross filed an opposition based on the German word mark BIODANZA, registered on March 29 1995 in Classes 16 and 44. Following translation problems, OHIM informed the parties, by a letter dated January 25 2007, that the opposition had been declared admissible.

    Toro Araneda contested the admissibility of the opposition, but OHIM informed him that the letter was not a decision against which an appeal could be lodged. Toro Araneda submitted a request seeking proof of genuine use of the earlier mark for the goods and services relied on in support of the opposition.

    On July 30 2009 the Opposition Division upheld the opposition in part and partially rejected the application.

    Toro Araneda filed a notice of appeal against the decision of the Opposition Division, but died on February 16 2010. On April 13 2010 the Second Board of Appeal of OHIM upheld the appeal, and dismissed the opposition in its entirety. It specified that the evidence of use of the earlier mark produced by the opponent was not sufficient to prove the genuine use of that mark.

    Subsequently, the International Biocentric Foundation Ltd (IBF) and Toro Araneda’s heirs lodged a response in which they claimed that, following Toro Araneda’s death, the application for registration had been transferred to IBF under his will. IBF was recorded as the new proprietor of the CTM application on February 21 2011.

    Before the General Court, the opponent raised the issue of the inadmissibility of the response of IBF and the heirs : she argued that IBF and the heirs had no locus standi, and that the response was not lodged in time. Article 135 of the Rules of Procedure specifies that the period within which a response must be submitted is two months from the date of the service of application ; that period can be extended by 10 days on account of distance. The General Court decided that, in this case, the reponse had been submitted in time, since the date which had to be taken into consideration to compute the deadline was that of the service of the application.

    Second, with regard to the alleged lack of locus standi of IBF and the heirs, the court held that a CTM application constitutes an object of property under the relevant EU legislation : • Article 16 of Community Trademark Regulation (207/2009) provides that a trademark is an object of property, and Article 5 of that regulation provides that the proprietors of CTMs are natural or legal persons.

    • Article 24 of the regulation provides the possibility to transfer an application for registration from one person to another.

    • Article 84 of the Implementing Regulation (2868/95) provides that an applicant automatically becomes the proprietor of the registered CTM.

    The General Court deduced that a deceased person cannot be the proprietor of an application for registration of a CTM ; however, there is no provision in Regulation 207/2009 that the death of an applicant entails the expiry of that application. Therefore, in the event of the death of the proprietor of an application, that application is transferred to another person, designated according to the inheritance law of the member state at issue.

    The General Court further held that the new owner of a CTM application must be registered with OHIM. However, regardless of when that registration takes place, the new proprietor must be considered as having been the proprietor of the application from the moment of death of the initial applicant. In this case, IBF must be considered as the new proprietor of the application from the moment of Toro Araneda’s death. Therefore, IBF was a party in the proceedings before the Board of Appeal when the contested decision was adopted. Consequently, it could participate as intervener before the General Court under Article 134 of the Rules of Procedure.

    In addition, the General Court specified that the decision of OHIM to register IBF as the new owner of the application did not form part of the subject-matter of this case, noting that, “while it is true that the General Court is entitled to examine the locus standi of any of the parties before it, such an examination cannot lead it to question an OHIM decision that is not contested before it”. Article 59 of Regulation 207/2009 provides that only parties to the proceedings that have led to a decision of a department of OHIM can contest it. The challenge can relate only to the issue of whether the formal registration conditions for such a transfer were fulfilled, but cannot concern the name of the heirs, which come under national law. As the grounds on which an opposition may be based are solely the relative grounds for refusal, the issue of who is the proprietor of the application cannot, therefore, be decided within the context of the opposition.

    The General Court concluded that “the plea of inadmissibility of the response of IBF and the heirs of Toro Araneda, raised by the [opponent], must be rejected" and that the response must be declared admissible.

    The court then turned to the issue of genuine use. According to Article 42 of Regulation 207/2009, an applicant for a CTM may require proof that the earlier national mark, relied on in support of the opposition, has been put to genuine use during the five years preceding the publication of the application. The Board of Appeal had found that genuine use of the earlier mark had not been proved, because the evidence provided consisted only of advertisements.

    The General Court concluded that the Board of Appeal had correctly found that the evidence submitted was insufficient to prove genuine use, since it is necessary to demonstrate that the advertising material at issue, regardless of its nature, had been sufficiently distributed to the relevant public. In the present case, the advertisements had appeared in magazines whose circulation in Germany was not a well-known fact.

    The opponent claimed that the board had failed to take into consideration the nature of the goods and services covered by her trademark, which are offered in the context of ’walk in’ workshops, without enrolment. The General Court stated that the list in Article 22 of Regulation 2868/95 does not constitute an exhaustive list of supporting documents ; however, the case law requires that the proof of genuine use be demonstrated by solid and objective evidence, even for ’intangible’ services. The court noted that the opponent “could have submitted, in particular, internal documents from her company, or, where relevant, photographs, to prove that the workshops and festivals concerned by this advertising were actually organised”.

    In addition, the opponent claimed that Toro Araneda had acted in bad faith by making an application seeking proof of the genuine use of the earlier mark. The court stated that, to establish bad faith, OHIM would have to find not only that the mark at issue had been put to genuine use during the relevant period, but that the party making the application was aware of that fact. Here, the opponent had not proved that her mark had been put to genuine use. The court also held that, even if the party making an application was aware of a use of that mark, this would not necessarily mean that such an application had been made in bad faith : “it is legitimate to want to submit for assessment by the competent bodies of OHIM the question of whether the use that one is aware of is sufficient to constitute a genuine use”.

    Finally, the opponent argued that the board had infringed the general principle of protection of the right to defend oneself, because it had not informed her that it considered that proof of genuine use had not been provided. However, the General Court stressed that, according to Community rules, this right means “that a person whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity to make his point of view known” ; it does not mean that courts are bound to inform the opponent of the final position that it intended to take.

    It was apparent from Paragraph 13 of the board’s decision that it had invited the opponent to submit her observations. The General Court decided that she had been given "sufficient opportunity to submit evidence of the genuine use of the earlier trademark and her observations on the appeal of the other party before the Board of Appeal". The court thus decided that the board had made no procedural error, and the appeal was dismissed in its entirety.

    Richard Milchior, Granrut Avocats, Paris

    Source : World Trademark Review Daily

        

Richard Milchior