GERONIMO - CHEESE PACT HITS BoA; PERFIX/CERFIX - BUT NOT IN ENGLISH

Curia has posted two fresh Community trade mark decisions today from the Court of First Instance of the European Communities (CFI),one in English and one, alas, not.

When both parties agree, you'd better listen!

The English-language decision is Joined Cases T-466/04 and T-467/04 Elisabetta Dami v OHIM, The Stilton Cheese Makers Association. It involves the merchandising of an engaging mouse called Geronomo Stilton (above, right). Dami applied to register as a Community trade mark the words GERONIMO STILTON for, among other things:

‘Meat; fish; non-living molluscs and crustaceans; poultry and game; meat extracts; tinned meat; preserved, dried and cooked fruits and vegetables; jellies; jams; eggs; milk; milk products; dairy products; cheese; butter; yoghurt; milk beverages; edible oils and fats; pickles; fruit preserves; vegetable preserves; meat preserves; fish preserves’ (Class 29);

‘Cake pastry; pasta, sweets; coffee; tea; cocoa; sugar; rice; tapioca; artificial coffee; flour; preparations made from cereals; bread; biscuits; tarts; pastries; pralines; ices and ice-cream; honey; syrup; pepper; vinegar; sauces; spices; ice; coffee-, cocoa- and chocolate-based beverages' (Class 30).

The Stilton Cheese Makers Association, custodians of one of England's most wonderful treasures (below, left), opposed, citing earlier marks in a number of member states corresponding to the word STILTON in relation to milk products in Classes 16, 29 and 30. The Opposition Division allowed the opposition in respect of the goods in Classes 29 and 30 but rejected the rest of the opposition.

Dami appealed in relation to Classes 29 and 30; the Association appealed in relation to Class 16. After Dami wrote to the Board of Appeal to request a change in her specification of goods, the parties jointly applied to the Board to stay the proceedings, referring to that letter. The Board told the parties that it interpreted the letter as a joint application to restrict the list of goods designated by the mark for which registration was sought, giving the parties a restricted list. Dami asked the Board to review that interpretation, claiming that the letter was only a joint application for a stay of the appeal proceedings on account of the differences in the parties’ intentions, as the opposing party was calling for more amendments than had been mentioned in the letter. The Board rejected that application and subsequently held that the withdrawal of the opposition had brought the proceedings to an end.

Dami appealed to the CFI for annulment of that decision, maintaining that the Board had erroneously held that the parties expressed a common intention to bring the proceedings to an end. The Association agreed. The CFI then had to decide whether the action was admissible and then whether the Board could have validly concluded that the parties had the common intention of bringing the proceedings before it to an end.

Annulling the Board's decision, the CFI ruled as follows:

* In proceedings following the decision of a Board of Appeal in opposition proceedings, OHIM had no power to alter, by the position it adopted before the Court, the terms of the dispute as delimited in the respective claims and contentions of the CTM applicant and of the opponent. However, it did not follow that OHIM had to contend that an action brought against a decision of one of its Boards of Appeal should be dismissed.

* While OHIM did not have the capacity to bring an action against a decision of a Board of Appeal, it could not be required to defend systematically every contested decision of a Board of Appeal or automatically to claim that every action challenging such a decision should be dismissed. Accordingly there was nothing to prevent OHIM endorsing a head of claim of the CTM applicant or simply leaving the decision to the discretion of the Court, while putting forward all the arguments that it considered appropriate for giving guidance to the Court.

* In this case the head of claim put forward by OHIM and the arguments advanced in support of it were admissible in so far as they did not exceed the bounds of the claims and arguments put forward by the applicant.

* The power provided for under rule 20(5) of Commission Regulation 2868/95 (which implemented the CTM Regulation) to restrict the list of goods or services was vested solely in the CTM who might, at any time, apply to OHIM for that purpose. In that context, the withdrawal, in whole or in part, of a CTM application had to be made expressly and unconditionally.

* The Board's assertion that the parties had expressed a common intention of bringing the proceedings to an end had no factual basis. Accordingly both Dami and the Association were right to assert that the letter merely contained a joint application for a stay of the proceedings. There was nothing to suggest that there was a subsequent agreement warranting the proceedings being brought to an end.

The IPKat reminds readers that the Boards of Appeal are not an independent judicial forum. They are part of OHIM and serve as an administrative filter as well as an arbiter of the rectitude of registration/oppositions on the facts of individual cases.

Merpel adds, it seems such a shame that Dami and Stilton can cooperate in ganging up on OHIM but not in sitting down to settle their differences ... oh, and don't forget issues of convergence - when fictional character and milk solids come right up against each other (above, right).


It may only be in French and Portuguese ... but it's still the law

The second CFI case today is Case T-206/04 Fernando Rodrigues Carvalhais v OHIM, Profilpas Snc, available in French. It involves two figurative marks - the CTM application for Perfix in Classes 6, 17 and 19, opposed by earlier registrations of Cerfix for goods in Classes 6 and 17. The Opposition said there was no likelihood of confusion. The Board of Appeal disagreed and rejected the application. The CFI has upheld the Board of Appeal decision. The IPKat feels that the Opposition Division probably got it right: the goods in question -- classe 6 : Profils métalliques et leurs accessoires; classe 17 : Profils en matières plastiques et leurs accessoires, joints et garnitures en matières plastiques; classe 19 : Matériaux de construction non métalliques, rebords (garnitures) et joints pour céramiques, rebords (garnitures) et joints pour marbres, rebords (garnitures) et joints pour revêtements en général (non compris dans d’autres classes) -- are not the sort of thing you buy on impulse and he'd be surprised if the relevant consumer would come unstuck, even allowing for an imperfect memory or a skinful of wine ...