STRONG WORDS FROM THE SECOND BOARD

The OHIM Second Board of Appeal has condemned the OHIM Opposition Division’s practices regarding oppositions which are inadmissible under r.18 CTMIR.

Cabouchon applied to register CABOUCHON as a CTM for goods in Classes 14, 18 and 25. Doring opposed the application based on her German CABOUCHON word mark, registered for Classes 14, 18 and 20, registration No 396 10 653. The opposition was rejected by the OHIM Opposition Division, which found that although the Opposition Division had been told that the opposition was based on a word mark, Doring later submitted a registration certificate which showed a device mark, rather than a word mark. The Opposition Division therefore found that Doring had failed to substantiate its earlier right, and therefore, the opposition based on the earlier right was not well-founded. Doring appealed.

The appeal was allowed. By providing the certification and registration number of the mark, Doring had sufficiently identified the mark. However, it was the Opposition Division’s decision to require Doring to provide proof that she had used her mark that make it for real criticism. Said the Second Board of Appeal:

This is clearly a case in which the refund of the appeal fee is justified under Rule 51 CTMIR. The contested decision was based on a ground on which the opponent was never given a chance to comment. That breach of the right to be heard amounts to substantial procedural violation within the meaning of Rule 51. A further unsatisfactory aspect of this case is that the Opposition Division was apparently quite willing to put the opponent to the inconvenience of submitting proof of use of the mark on which the opposition was based and submitting ‘further facts, evidence and arguments’, even though – on the view ultimately taken by the Opposition Division in the contested decision – nothing that the opponent did or said after the expiry of the opposition period could have enabled the opposition to succeed. This case shows that there is a pressing need for the Office to reconsider some of its practices. If the Office considers that an opposition is incurably impaired by a formal defect, it should take a decision to that effect at an early stage instead of causing the parties to waste their time submitting evidence and legal argument on the substance of the opposition. That, after all, appears to be the philosophy underlying Rule 18 CTMIR.

The IPKat, always the cheap sensationalist, was quite excited when he saw such strong words. Seriously though, the Board’s point seems so obvious that it’s rather worrying that the Opposition Division didn’t figure this one out for itself.