WITHDRAWAL OF CTM APPLICATIONS BY SILENCE

This is a reposting of yesterday’s blog, which was mysteriously eaten by cyberspace ghosties. News of a decision from the OHIM Second Board concerning the implied withdrawal of applications to register CTMs.

The applicant applied to register TRENTON as a CTM in Class 7. The opponent opposed the application based on its LENTON mark, registered in Classes 6 and 7. The opposition was rejected on the basis of dissimilarity of marks. The opponent appealed, but the applicant submitted no observations during either the opposition or the appeal proceedings. Among the grounds of appeal, the opponent argued that the opposition had been lodged against a seemingly non-existent entity, the applicant.

Silent applicants, here comes the twist...

The appeal and opposition proceedings were closed and the contested decision did not take effect:

*The opponent’s allegation that the applicant did not exist was unfounded. Although the applicant had not submitted any observations throughout the proceedings, there could be many reasons why this would be the case.

*However, the applicant’s inactivity could not be ignored. Instead, it was treated as an implicit withdrawal of the CTM application. Withdrawals must normally be express, but they can be implied when it may be inferred from facts and circumstances, which in the Office’s view unequivocally demonstrate that the applicant has withdrawn its application. Such a standard could be reached by analogy with the case law on renouncement of trade mark rights in the cases involving exhaustion where goods are parallel imported from outside the EU.

*In this case, the applicant’s total silence throughout both the opposition and appeal proceedings unequivocally demonstrated that the applicant had lost all interest in registering its Community trade mark application, which implied its withdrawal and therefore, the consequent termination of the proceedings, as follows from Article 81(3) CTMR.

The IPKat wonders if this use of the parallel import cases means that there is a trade mark-wide standard for implying consent from silence.