CFI powers to a decision in Black & Decker multiple appeal

Today's big case from the Court of First Instance (CFI) in Luxembourg is more than one case, being Joined Cases T‑239/05, T‑240/05, T‑245/05 to T‑247/05, T‑255/05, T‑274/05 to T‑280/05, Black & Decker Corporation v Office for Harmonisation in the Internal Market, Atlas Copco AB.

Right: Black & Decker, in black and orange livery

Black & Decker filed applications to register 13 Community trade marks for (i) yellow and black figurative marks representing electric power tools, (ii) three-dimensional representations of two yellow and black electric power tools and (iii) a representation of the juxtaposition of the two colours yellow and black. All were for ‘manually operated portable electric power tools (excluding gardening tools)’ in Class 7 of the Nice Classification. Atlas Copco opposed, citing its earlier non-registered marks and other signs used in the course of trade and maintaining that use of Black & Decker's marks was liable to be prevented by reference to those earlier marks. The notices of opposition were accompanied by two Attachments. In each case Attachment A was a depiction of one of Atlas Copco's products, while Attachment B read: "Due to the use which it has made of the sign, the opponent has the right to prohibit the use of the opposed Community trade mark in the United Kingdom under the common law tort of passing off and in the other European jurisdictions under national unfair competition law". The faxed notices of opposition were received in black and white within the period for filing them, the colour originals arriving later.

Below: a selection of Atlas Copco products

The Opposition Division rejected the oppositions. In each case it held that the documents lodged by Atlas Copco within the permitted period laid down by Article 42(1)(c) of Regulation 40/94 were insufficient to identify the earlier marks and signs clearly. The First Board of Appeal disagreed, set aside the decisions of the Opposition Division and remitted them for further prosecution. In the Board's view the earlier trade marks and signs on which the oppositions were based were well identified in Attachment A: each electric power tool depicted ‘was clearly identified since the representations faxed in black and white, confirmed by mail in colour, were perfectly clear and precise’. Some models were even identified by their reference number and by their specifications shown in tabular form. Black & Decker then applied to the CFI to have the Board's decision annulled.

The CFI dismissed Black & Decker's application. In that court's view, in brief:

* it was not disputed that the notice of opposition specified the countries in which the earlier marks and signs at issue were subject to protection, the goods on which the opposition was based and the nature of the earlier rights.

* it was sufficiently clear from the information contained in each notice of opposition that the oppositions were based on the overall external appearance of the electric power tools specifically identified in Attachment A, the shapes and models of which were varied and the colours of which were mainly a combination of yellow and black, but also combinations of yellow and metallic grey, brown and metallic grey, and blue and metallic grey.

* the reference numbers and the specifications in tabular form served to specify the electric power tools concerned. In this way, Atlas Copco indicated which tools were relevant and thus facilitated the identification of the earlier trade marks and signs at issue.

* the issue of admissibility of the opposition must be determined by reference to the documents filed at the stage of admissibility, since the evidence and arguments put forward at a later stage of the examination of the merits has no effect on the preliminary issue of admissibility. The issue of whether the earlier trade marks and signs were clearly identified was part of the admissibility of the opposition and therefore had to be treated separately from questions on the merits.

The IPKat thinks this must be right, both on the facts and in principle. Merpel says, it's strange to see disputes about faxes trundling through the courts when the fax technology is fast fading away.

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